Global IP Matrix - Issue 4

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to Evergreening of plant variety in the ‘Plant Varieties Law!’ Ms Vijaya Chaudhary - Associate at LexOrbis www.lexorbis.com “Every April 26, we celebrate World ‘Under the current Intellectual Property Right (IPR) regime, the Indian Patents Act excludes plant per se or any part thereof including seeds, varieties, species and essentially a biological process from patentability.’ The Protection of Plant Varieties and Farmers’ Right (PPV&FR) Act, 2001 (hereinafter mentioned as the Act), a unique sui-generis system for the protection of plant varieties in compliance with Article 27(3) (b) of Trade-Related Aspects of Intellectual Property (TRIPs) Agreement, is the only legal instrument for protecting a new plant variety that has been developed. In order to be registerable under the PPV&FR Act, the variety must satisfy the four essential criteria of registration i.e. novelty, distinctiveness (D), uniformity (U) and stability (S). The novelty of a variety is decided on the basis of date of sale of a candidate variety. As per section 15(3) (a) of the Act, if the application for registration of a variety is filed within one year from the date of its sale in India or within six years (in the case of trees and vines) and within four years (in other cases), of its sale outside India, the candidate variety is considered to be a new variety. Provided, the use of said variety for trial purpose does not affect the novelty of the candidate variety. Furthermore, a variety in seed chain for more than one year can also be registered as an extant variety or a variety of common knowledge (VCK) under the PPV&FR Act.

of registration is calculated from the date of issuance of the registration certificate under the Act (section 24(6) of the PPV&FR Act).

For registering a variety under the PPV&FR Act

The applicant is required to make a request in the prescribed manner along with the seeds/

It is interesting to note that the total period of registration of both the new and extant (VCK) variety is the same i.e. 18 years (trees and vines) or 15 years (other varieties) as the duration

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propagating material of the candidate variety with the PPV&FR Authority (hereinafter mentioned as the Authority). Provided the Authority shall accept the application of only those crop species that are notified by the Central Government under section 29(2) of the Act. Till date, registration is open for only 151 crop species of various agricultural, horticultural, forestry and commercial crops. Hence, the crop species which are not notified under the Act, the newly bred variety of the same crop cannot be registered with the Authority. Furthermore, the grant of a registration certificate to a plant variety under the PPV&FR Act is subjected to actual field testing of the DUS characteristics claimed for a candidate variety, said test may be a field test or on-site testing, depending upon the method of propagation of the variety applied for registration. The DUS test is conducted strictly in compliance with the crop specific DUS Test Guideline published by the Authority. As per section 19 of the Act, the DUS testing of a new variety is conducted for two years and two locations and for extant variety; the DUS Test is conducted for one year and two locations. However, in case of an essentially

import of seeds in India before applying for registration with the Authority. Furthermore, both the applicant as well as the Authority shall maintain the seeds of the registered variety, with substantial viability and purity, during the entire period of registration.

derived variety, the manner of testing shall be decided by the authority on a case-to-case basis. Hence, the DUS Test is necessary for all new varieties other than the essentially derived variety. Additionally, there is a provision of conducting a ‘special test’, if the field test fails to establish the requirement of distinctiveness for the candidate variety. Hence, the registration of plant variety under an extant category is less time-consuming in comparison to a new variety. As per revised procedure of registration published in September 2018 (http://www. plantauthority.gov.in/rp2.gif); The applicant must submit the specified quantity of seeds/ propagating material of the candidate variety, in the prescribed manner, at the time of filing the application for registration with the Authority. Provided, in the case of hybrids, seeds of parental lines, are also required to be submitted at the time of filing the application for registration. However, in the case of foreign applicants, such mandatory requirement of seed submission at the time of filing may cause unnecessary delay in the registration process, as they have to comply with the regulatory requirements for the

The varieties notified under section 5 of the Seeds Act, 1966 are also eligible for registration under the Act. Provided no DUS testing is conducted for such a notified variety and approval from the Extant Variety Release Committee (EVRC) is the only requirement for its registration. The total period of registration is also calculated from the date of notification of the said variety under section 5 of Seeds Act, 1966. However, the conflict arises when an application for registration of a parental line of notified hybrid is made with the Authority. As per the Indian Plant Variety Registry decision dated October 28, 2013 (on representation of Nuziveedu Seeds Pvt. Ltd., Applicant dated 13.06.2013 and 12.07.13), the parental line of a notified hybrid cannot be considered to be a notified variety as only a hybrid variety and not its parental lines were expressly notified under section 5 of the Seeds Act. The applicant challenged the order of Registry dated October 28, 2013, and contended that the characters of parental lines of the extant notified hybrid are documented in the application for notification of hybrid under section 5 of the Seeds Act and both the hybrid and parental lines must be considered as a single unit for propagation and stability. Upon reconsideration of Nuziveedu Seeds Pvt. Ltd. (applicant) representation against Plant Variety Registry decision dated October

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28, 2013, the learned Registrar in its order dated December 05, 2018 decided in favour of the applicant stating that parental lines of a notified hybrid variety shall be deemed to be notified under section 5 of the Seeds Act, 1966 and shall be eligible for the same period of protection as that of its notified hybrid variety. The Registry decision is based on Delhi High Court judgement in Maharashtra Hybrid Seeds Co. vs UOI for category of registration of a parent lines of a extant hybrid variety where the court in order to prevent evergreening of Intellectual Property Rights in Plant Varieties decided that parental lines of a hybrid shall be registered in the same category as that of its hybrid.

To conclude This decision of Registry not only restricts the indirect protection of hybrid after the expiry of the period of protection but also expedites the process of registration of parental lines of a notified hybrid variety.

1 IN THE MATTER OF: Nuziveedu Seeds Pvt. Ltd., with respect to registration of NC-71, NC-99, NC-102 and NC-108 cotton parental line varieties-Category to be applied.

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