The increasing demand for agricultural products with progressive scarcity of the natural resources water and agricultural land, preservation of biodiversity, is one of the challenges for the breeding industry. Food security, sustainability and environmental protection underline the high economic and social value of the breeding industry. This contribution to the commemorative publication (Festschrift) in honor of Prof. Dr. Peter Meier-Beck, “whose” Senate is – albeit rarely – also concerned with plant variety protection issues, attempts to highlight certain aspects and challenges that have to be overcome by the property rights system which is based on the International Convention for the Protection of New Varieties of Plants of 2 December 1961 (last revised on 19 March 1991 [UPOV Act 1991]), whether it meets these challenges and to what extent the existing system allows techniques and knowledge in the field of genetic engineering (step-by-step) to be included in overcoming these problems or which corrections appear necessary in practice to preserve and promote the justification of the grant and the value of plant variety rights.
I. Present situation
The breeding improvement of important characteristics of plants is time consuming and cost intensive. The plant variety right, an intellectual property right especially designed to the breeding of new plant varieties, is therefore of great importance for innovative plant breedings. Whether this system, which has remained unchanged in its basic features since 1991, fulfills its tasks, is crucially dependent on whether,
. a property right is granted quickly and inexpensively,
. this grants a sufficient scope of protection, and
. can be enforced as quickly as possible in case of an infringement.
Whether the current system can cope with these challenges must be questioned both with regard to the examination in the application procedure and in the infringement proceedings.
1. Specifics of natural material
The features that characterize the plant material are, regardless of the genetic structure of the respective plant material, critically dependent on the cultivation conditions: use of fungicides and pesticides, the quality and amount of fertilization substrates, the amount of watering, temperature and exposure to light, to name a few. In the nature of the subject matter of protection this entails uncertainties that must be taken into account in both the granting and infringement proceedings.
2. Granting procedure
Whether a new breeding result is registrable is currently mainly determined by a growing trial that is largely at the discretion of the respective Office (Art. 55 f. Council Regulation (EC) No. 2100/94 of 23 July 1994 on Community plant variety rights (Basic Regulation), Art. 22 Implementing Regulation; § 26 SortG ). Since the European Union has acceded to the UPOV Act 1991, the Community Plant Variety Office is bound by UPOV’s specifications for technical examination. These are recorded in document TG/1/3 as well as in the technical protocols based thereon for examining the material protection requirements of varieties of the respective genus. The examination is carried out by means of comparative cultivation, by including plants of previously known protected and unprotected varieties of the same genus to the plants of the new variety (“candidate variety”), in order to be able to determine to what extent the candidate variety meets the so-called DUS requirements and, in particular, whether it clearly differs at least with regard to one decisive characteristic from previously known varieties. This actual comparison is necessary in order to be able to observe and determine the expression of the characteristics justifying protection under the same cultivation conditions. For this purpose, so-called reference collections must be set up, which contain plants of generally known varieties as these must be included in a growing trial. Due to the large number of varieties and the meanwhile clearly noticeable climatic changes, this approach raises considerable problems that can differ from genus to genus.
a) Multitude of varieties and recording of characteristics
Due to the progress in breeding and the resulting large number of characteristics relevant to protection, not only the economic effort for setting up and maintaining the reference collections required for carrying out the technical examination increases. On the other hand, for reasons of expedience, the number of generally known varieties that are to be included in the reference collection must be reduced. The reliability of the result of the technical examination and thus the legal certainty depend crucially on the fact that the corresponding variety collections are as comprehensive as possible and, in any case, include the generally known varieties, which are essential for examining the distinctness of the candidate variety. A further complicating factor is that, due to the extremely extensive catalogs of characteristics and the resulting problems in the test of distinctness, very often require extensive collections.
b) Climate change
As mentioned at the beginning, the expression of the features characterizing the variety depend not only on the quality of the starting material, but in at least as crucial a way on the cultivation conditions. While uniform cultivation conditions in the greenhouse can be guaranteed more or less uniformly from year to year, this is not possible for field tests, especially of agricultural crops and shrubs. The latter also require comparative cultivation over several years.
The establishment of reference collections at a certain location for certain plant genus thus reaches far into the future and extends over periods of time in which climatic changes can have a significant effect on the morphological characteristics of the existing plants. This moreover can work to the disadvantage of those breeders of new varieties whose breeding results come from regions with climatic conditions significantly different from the test site, because originally already existing differences have been increased by the climatic changes in the meantime. Current examples are the decisions of the ECJ in the matters of “Braeburn” und “Gala Schnico”.
3. Infringement proceedings
In infringement proceedings it is important that the question of infringement is decided quickly. This is not possible, taking into account court practice, which – at least in the infringement process – does not consider evidence of infringement by means of a genetic expertise to be sufficient. According to case law, when examining whether objected to plant material falls within the immediate scope of protection of a protected variety, the phenotypic conformity, i.e., the external appearance, is decisive, genetic conformity is not a relevant factor. Also, for the proof that the objected to plant material is an essentially derived variety within the meaning of Art. 14 Paragraph 5 a (i) UPOV Act 1991, Art. 13 Paragraph 5 a Basic Regulation, § 10 Paragraph 3 No. 1 SortG, both genetic conformity and phenotypic distinctiveness as well as sufficient phenotypic conformity are decisive. Therefore, in the main proceedings a comparative cultivation – cultivation of plants of the protected variety next to the infringing plants – is considered necessary. This is time-consuming and cost intensive and thus gets in the way of a quick legal enforcement.
4. New means of examination
These few examples already direct one’s attention to the question whether molecular biological means of examination might not help to overcome the problems briefly outlined in here. Due to advances in molecular biology, it is nowadays possible to identify individuals based on their genetic structure. Since the genetic structure in the form of DNA is not influenced by culture conditions, the question arises with regard to both the DUS testing during the application proceedings as well as the infringement proceedings whether and to what extent molecular techniques can be used. The answers depend on the specific subject matter of protection of a plant variety right and on the question to what extent the use of molecular tools would correspond with the current UPOV Act 1991.
II. Subject matter of protection within the plant variety right
With every intellectual property right, the question of the specific subject matter of protection arises. The subject matter of protection is not only decisive for the question of the justification of an exclusive right, but also decisive for the determination of the scope of protection of the granted property right. Due to the interdependence of subject matter of protection and scope of protection a precise identification of the subject matter of protection is required in order to be able to determine the scope of protection in relation thereto, which can vary depending on the protected object.
1. Subject matter of protection
The requirements for protection are summarized in Art. 5 of the UPOV Convention:
“The breeder’s right will be granted when the variety is
c) uniform and
As a formal requirement, there is moreover the variety denomination according to Art. UPOV Act 1991. According thereto, the variety must be identified with a variety denomination as a generic name.
The granting of the breeder’s right may not be dependent on other requirements, Art. 5 (2) UPOV Act 1991.
Art. 1 (vi) UPOV Act 1991 defines a variety as
“… a plant grouping within a single botanical taxon of the lowest known rank which, regardless of whether it fully meets the requirements for the granting of a breeder’s right,
– by means of which the characteristics resulting from a certain genotype or a certain combination of genotypes can be defined,
– can at least be distinguished from any other plant grouping by the expression of one of the characteristics mentioned and
– in view of their suitability to be propagated unchanged, can be seen as a grouping … “.
Art. 5 (2) of Basic Regulation takes up this definition.
2. Interim result
As an interim result, it follows from these regulations that the subject of plant variety protection is plant material, which is characterized by specific external characteristics, but which can be traced back to the genotype or a combination of genotypes, i.e., not to external factors, that influence the expression of the characteristics as well as allow a clear objective differentiation between the varieties of a plant genus and can be described.
The subject matter of protection is therefore the genetic structure as far as it expresses external characteristics that are relevant to the issue of grant of protection. The protection requirement of distinctiveness therefore is linked to
“the expression of characteristics resulting from a genotype or a combination of genotypes …”
(Art. 7 Basic Regulation , Art. 7 UPOV Act 1991).
Since DNA can nowadays be described, it is generally possible to determine the subject matter of protection of a plant variety right by analyzing the genome.
3. Description of the subject matter of protection
However, although the DNA is the protected object, the UPOV Act 1991 is linked to at least one external characteristic and its expressions that can be traced back to the genome. These can be qualitative, quantitative and pseudo-qualitative characteristics. These are recorded in the variety description that is attached to the grant of the plant variety right.
The connection to external characteristics is due to the fact that the granting of an exclusive right requires an advantage over the previously known. In plant variety right law, this is the case when the breeding activity leads to an enrichment of the flora. Such progress, however, does not already exist when the genetic structure has been changed in any way, but when this change becomes apparent in an external characteristic. This is emphasized by Art. 7 UPOV Act 1991:
“The variety shall be deemed to be distinct if it is clearly distinguishable from any other variety whose existence is a matter of common knowledge at the time of the filing of the application.”
III. Use of molecular biological analysis procedures
There have been efforts for a long time to test the use of molecular markers in the examination of distinctiveness, uniformity and stability. To this end, the Community Plant Variety Office (CPVO) has set up a working group called “CPVO IMODDUS (Integration of Molecular Data into DUS testing)” to examine the extent to which molecular techniques can be introduced in the growing trial. As Office of a signatory state of the UPOV Act 1991, the CPVO must take into account the requirements of this working group and UPOV, which can be found in the document UPOV/INF/18. The focus of this examination is the extent to which the use of biochemical and molecular methods in the DUS examination is compatible with the current UPOV Convention.
1. Grant of protection
Plant variety protection is granted for new breeding results if, among other things, they are clearly distinguishable from any other plant grouping in at least one decisive characteristic.
A basic prerequisite for the use of molecular biological methods in the examination of distinctness would be a reliable connection between the marker and the expression of the characteristic. In many cases, however, it has not yet been possible to establish a connection between the characteristics to be used for the grant of the property right and the corresponding markers in the genome.
In addition, a mere examination of distinctness with regard to the genome cannot serve as a justification for the granting of a property right. Exclusive rights require justification. This was and has always been justified with the idea of reward. Only those who create progress should be rewarded with an exclusive right of exploitation for a limited period of time. However, more or less large differences in the genetic structure of plants do not mean progress. Rather, this must have advantages over the previously known, because, for example, the disease resistance is significantly increased, the shelf life of fruits is improved without additional technical effort or the durability of cut flowers is significantly extended. Progress must therefore become manifest.
The idea of reward leads to the question as to which characteristics must be relevant in order to justify protection if there are differences between the candidate variety and the previously known varieties of the same species.
If one looks at the current granting practice, it seems that the problems of the examination of distinctness that have been briefly outlined in here could be partially resolved by correcting this practice. This shall be illustrated using the example of geranium varieties. The characteristics catalogue on which the technical examination is currently based comprises 27 characteristics. With many of these characteristics the question arises which value they represent in order to justify the granting of an exclusive right. Concerning the upper petal alone there are seven “sub”characteristics, in the case of the lower petals there are six. Considering how big a petal is in geraniums, the serious question arises whether it constitutes a breeding progress worthy of protection, if for example on the upper petal a significant deviation of the main color between the edge and the middle is only recognizable for the absolute expert. While according to the version of the UPOV Act of 1978 it still was a protection requirement that the candidate variety could be significantly distinguished from any other variety by one or more important characteristics, the requirement “important characteristic” was dropped in the 1991 revision. Important meant that the candidate variety had to have an advantage over previous varieties. Even if the word “important” no longer appears in the legal texts it would be indispensable to continue to take this into account when defining characteristics and when granting protection, since the basic prerequisite for the justification of an exclusive right is that what is to be protected also represents actual progress.
The difficulties – when examining the distinctness of varieties in the case of a high density of these varieties, caused by long lists of characteristics, and with a view to the high degree of genetic proximity of the crossbreeding partners – to phenotypically differentiate new breeding results from previously known varieties, are clear indications that the current granting practice is in urgent need of correction as outlined in here.
2. Infringement proceedings
Property rights are only of value if they offer a comprehensible scope of protection, as this is the only way to enforce them quickly and cost-efficiently. As a mirror image of a clearly defined, easily ascertainable scope of protection, there is legal certainty on which all those involved depend. Since the genetic structure is more independent of external factors, it is obvious that genetic examinations should have sufficient evidential value for the existence of an infringement. Compared to the comparative cultivation, this would within a very short time allow the conclusion whether there is plant material that infringes property rights. There are extensive studies, especially for agriculturally important species such as soy, which confirm that molecular biological examination methods allow a clearer allocation of plant material to a certain variety than would be the case with the help of morphological characteristics.
However, prerequisite for use of DNA analyses as means of evidence would be that there must be threshold values for the genetic match for the respective genera in order to be able to decide whether the allegedly infringing material falls within the immediate scope of protection of the infringed variety, is merely to be considered a derived variety or is no longer covered by the protection of the protected variety. Whether this applies equally to plant varieties created by SMART Breeding as it does to results from classic breeding processes would need to be investigated in more detail.
The existing legal system for the protection of new plant varieties has basically stood the test but requires considerable corrections in practice. These are possible and even required on the basis of the current legal situation. In the process of granting protection, the existing problems cannot be solved by using molecular biological examination methods within the framework of the so-called DUS examination in order to establish a clear morphological distinction that could not be determined otherwise. Rather, there must be a clear distinction in one important morphological characteristic. The granting process offers a decisive possibility of overcoming the existing practical difficulties, namely, to reduce catalogs of characteristics depending on the plant species. The distances between the remaining characteristics would have to be redefined in order to be able to assess them as clearly distinctive by increasing the distances between the levels of assessment.
On the other hand, in infringement proceedings, the genetic comparison of plant material can very well replace comparative cultivation if there is sufficient data.
** Englisch Translation of UPOV 1991 – Ein zeitgemäßes Schutzrechtssystem für Pflanzenzüchtungen oder Zeit für ein neues Schutzrecht? published in Festschrift für Peter Meier-Beck zum 65. Geburtstag in GRUR 2/2021 (Commemorative publication for Peter Meier-Beck on the occasion of his 65th birthday in GRUR 2/2021).
 On the Community Plant Variety Protection ECJ April 15, 2010, Case C-38/09 P – SUMCOL 01, ECLI: EU: C:2010: 196; See discussion of Würtenberger JIPLP Vol. 9/2010 as well as the decision of the CFI JIPLP Vol. 4/2009, p. 403 ff.
 Council Regulation (EC) No. 2100/94 of 23 July 1994 on Community plant variety rights; https://eur-lex.europa.eu/legal-content/DE/TXT/PDF/?uri=CELEX:31994R2100&from=DE
 Commission Regulation (EC) No 874/2009 of 17 September 2009 establishing implementing rules for the application of Council Regulation (EC) No 2100/94 as regards proceedings before the Community Plant Variety Office; https://eur-lex.europa.eu/legal-content/EN/TXT/?qid=1484650269274&uri=CELEX:02009R0874-20160922
 German Plant Variety Protection Act as amended. December 19, 1997, Federal Law Gazette I p. 3164; https://www.bgbl.de/xaver/bgbl/start.xav#__bgbl__%2F%2F*%5B%40attr_id%3D%27bgbl197s3164.pdf%27%5D__1589175981783
 Würtenberger in: Erdman / Rojahn / Sosnitza, manual of the specialist lawyer for industrial property protection, 3rd edition, p. 434 with an overview of the cultivation test.
 General introduction to testing for distinctness, homogeneity and stability and elaboration harmonized descriptions of new plant varieties (https://www.upov.int/export/sites/upov/resource/ /de/tg_1_3.pdf).
. distinctness, uniformity and stability.
 Judgment of the EGC v. 5.2.2019, case T-177/16, ECLI: EU: T: 2019: 57.
 Decision of the ECJ v. November 8, 2018, Case C-308/18 P, ECLI: EU: C: 2018: 886.
 Düsseldorf Higher Regional Court, judgment of 06.04.2006, I-2 U 155/02, Rn. 68, ECLI: DE: OLGD: 2006: 0406.I2U155.02.00.
 Düsseldorf Higher Regional Court, a.a.O., Rn. 80.
 Except for viral and bacterial contamination
 see Würtenberger, “On the protection area of protected plant varieties”, Mitt. 2015, 1 ff.
 Art. 2.
 Art. 3 (1) (ii).
 UPOV TG/1/3 Nr. 4.4, https://www.upov.int/export/sites/upov/resource/de/tg_1_3.pdf.
 UPOV / INF / 18/1 (2.1) as well as the question of whether pairs of varieties that are indistinguishable when using conventional characteristics would be judged as distinguishable when using molecular markers and whether these decisions would be acceptable for maintaining the conservation value.
 Characteristic 17 TG/109/4.
 von Pechmann / Strau, “The Diplomatic Conference on the Revision of the International Convention for the Protection of New Varieties of Plants”, GRUR Int. 1991, 507, 50
 Wuesthoff, The concept of novelty according to the Plant Variety Protection Act, GRUR 1968, 474, 475..
 See in particular the above FN 23 explanation by Zhang et al.
 See also the demands of the international community of breeders of vegetative reproducible ornamental and fruit trees (CIOPORA), position Papers on IP 2014, www.ciopora.org/de/publication/ciopora-papers-on-ip.
DR. GERT WÜRTENBERGER, Lawyer in Munich; President of the German Association for Intellectual Property Right and Copyright Law (GRUR)