Common Catalogue Listing not Proof of Plant Variety Rights Ownership

Italy
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In July 2015, a court in the city of Milan, Italy held that the Italian subsidiary of BASF failed to establish its ownership of plant variety rights in a lawsuit that BASF brought against a local company. BASF Italia S.p.A. v. Società Agricola Magnani Caterina e Magnani Lorenza, No. 8745/15 (Ct. Milan, Bus. Chamber A, 16 July 2015).

BASF Italia sued Società Agricola Magnani, alleging that it infringed European patents relating to its Clearfield® rice planting system and plant variety rights held by BASF in the variety POLLUX CL, a rice variety said to be especially resistant to imidazolinone herbicides. BASF first obtained, through ex parte proceedings, an order to search Magnani’s fields and to inspect rice seedlings and seeds found there. Subsequently, it sought an injunction and damages against Magnani for alleged patent and plant variety rights infringement.

Rice
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Responding to the patent infringement allegations, Magnani contended that it had been authorized by BASF to use the CLEARFIELD technology with respect to another rice variety known as SIRIUS. Regarding BASF’s allegations that Magnani had infringed BASF’s plant variety rights, Magnani observed that it had previously lawfully obtained a supply of seed of the POLLUX variety for experimental cultivation. It contended that any remaining POLLUX plants in its fields were being grown solely for propagating purposes, and thus its conduct was exempt from liability under Article 14 of Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights.

In a decision dated 16 July 2015, the court held that BASF had failed to establish its ownership of a plant variety rights registration for the POLLUX CL variety. According to the court, all that BASF had shown was that the variety was included in the “common Catalogue of varieties of agricultural plant species” established by Council Directive 2002/53/EC of 13 June 2002 on the common catalogue of varieties of agricultural plant species. That directive requires all EU Member States to publish one or more national catalogues of plant varieties accepted for certification and marketing in their territories. Among the criteria for recording a variety in such a common catalogue, the variety must be “distinct, stable, and sufficiently uniform.” The variety must also have a satisfactory value for cultivation and use.

The court acknowledged that the Directive 2002/53 criteria of distinctiveness, stability, and uniformity are similar to the prerequisites for registration of plant variety rights under Regulation 2100/94. However, the court emphasized that the inscription of a variety in the common catalogue–whose primary purpose is the protection of health–is not the equivalent of, or a substitute for, obtaining a registration for plant variety rights–whose object is to award intellectual property rights. In the present case, the court observed that the allegedly unauthorized reproduction by Magnani of the allegedly protected rice variety occurred prior to the appearance of the variety in the common catalogue. For these reasons, the court dismissed BASF’s allegations that Magnani infringed its plant variety rights.

With regard to BASF’s allegations that Magnani infringed its patents, the court determined that additional investigation was necessary before the court could address the allegations.

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