SME interview: Vitirover

Trademarks and variety denominations

Geographical indications

Counterfeiting and food frauds

Compulsory licence case

The UPOV PRISMA online tool

Illegal seed practices

Ask the Helpline

Events

Quizzes

Biotech Directive

Patents and plant breeders´ rights

Bilateral co-operation EPO-CPVO

Plant and animal inventions

The future of crop innovation

The European IPR Helpdesk

Bulletin N°31 October - December 2018

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Even though intellectual property has been linked to agriculture for more than 80 years, agricultural innovation has increasingly relied upon IP protection tools. Plant variety rights (PVRs) and patents have traditionally been the main forms of protection of agricultural products, but other IP rights, such as trade marks and geographical indications (GIs), are also used to increase the value of these products.

With the European Union being one of the leading producers and exporters of agri-food products in the world, we have decided to dedicate this bulletin issue to the agribusiness industry.

Jean-Luc Gal, European Commission, DG GROW F3, Intellectual Property and Fight

Against Counterfeiting, introduces this issue with the Notice issued by the European Commission on the Biotech Directive and the subsequent developments.

The European Seed Association (ESA) then explains the concerns of the sector regarding the interface between patents and PVRs which led to the creation of the PINTO database.

The Community Plant Variety Office (CPVO) provides an overview on the objectives and achievements of the administrative arrangement for a bilateral cooperation between the EPO and the CPVO, while the EPO has contributed an article on patentable inventions relating to plants and animals.

An article on the balance between IP systems and the future crop innovation in Europe is provided by Juan Antonio Vives-Vallés, Assistant Lecturer at the University of the Balearic Islands.

4iPCouncil has interviewed the CEO of Vitirover, a SME that has used IP to protect its sustainable and efficient invention in the field of agribusiness.

Philipp von Kapff and the CPVO have contributed a joint article on the interface

between trade marks and variety denominations, and Massimo Vittori, Managing Director of oriGIn, writes about GIs and sustainability. Then, Marco Musumeci from the United Nations Interregional Crime and Justice Research Institute focuses on counterfeiting and food frauds.

Philippe de Jong and Elena Bertolotto, from the Altius law firm, talk about the first compulsory licence case before the CPVO, posing the question on how to strike the balance between PVRs and the public interest. Finally, the International Union for the Protection of New Varieties of Plants presents to us their new electronic application system, UPOV PRISMA, while the International Seed Federation has provided us with their position paper on illegal seed practices.

As per usual, the Bulletin reports information on the European IPR Helpdesk’s past and future events together with the latest updates from our Helpline service. We invite you to test your knowledge on patent searching with our usual patent quiz and to solve our brand-new true-or-false test.

Wishing you an inspiring read!Your Editorial Team

CONTENTS

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This was notably the case for the developments of new fruits and vegetables combining classic breeding techniques, such as crossing and selection, and technical devices, such as gene markers, in order to select the more promising offspring.

The Enlarged Board of Appeal of the European Patent Office took the view on 25 March 2015 that no provisions in the European Patent Convention nor in its Implementing Rules opposed the grant of a patent on broccolis and tomatoes which might be obtained by crossing and selection together with the use of a marker to select the more promising elements of each generation2.

This decision created a lot of concern in opinion at large and was also echoed by several Member States of the European Union. It was decided, during the Dutch EU Presidency in 2016, that the Commission would clarify this issue.

In its Notice of 3 November 20163, the Commission made clear that according to Directive 98/44, the intention of the EU legislator (European Parliament and Council)

Jean-Luc GalEuropean Commission, DG GROW F3Intellectual Property and Fight Against Counterfeiting

In July 1998 The European Parliament and the Council of the European Union adopted Directive 98/44/EC on the legal protection of biotechnological inventions1. This Directive clarifies the patentability criteria and the subsequent scope of protection of patents granted for living organisms, including elements of the human body, plants and animals.

Even if the Directive was adopted 20 years ago, its provisions are still relevant and fit for purpose today. That said, biotechnology is a fast moving sector and new technology sometimes challenges the adaptability of the provisions.

Indeed, in recent years, techniques for obtaining new plants and animals have been improved and the separation between what might be protected by patents and/or by plant variety rights has been put into question.

when adopting the Directive was to exclude from patentability essentially biological process as well as the products obtained through this process, irrespective of whether certain technical devices such as gene markers were used for optimising the final product.

The Notice was endorsed by Conclusions of the Competitiveness Council adopted in February 2017, in which the Council requested the European Patent Office inter alia to adapt its legislative framework with the view to put it into line with the content of the Directive.

Biotech Directive and subsequent developments

1 OJEC 30.07.98, L213/132

G2/12 Tomatoes 2 and G2/13 Broccoli 2, OJ EPIO 2016, A283

Commission Notice on certain articles of Directive 98/44/EC of the European Parliament and of the Council on the legal protection of biotechnological inventions, OJEU 8.11.2016, 6997

European Commission, DG GROW F3Intellectual Property and Fight Against

Counterfeiting

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but these new developments have brought new elements into the breeding world, such as patents, which allow protection not only on tools and methods but also on plants bred via such methods.

The interface problem

Plant varieties as such and essentially biological processes for the production of plants have always been excluded from patentability to ensure that the two systems (patents and PBR) do not interfere with each other. However, in practice – due to the specific nature of plant-related patents and some provisions of patent law2 – plant varieties can easily fall under the scope of patents. This leads to important practical implications for plant-breeding: (i) uncertainty concerning the freedom to operate and (ii) reduced availability of plant genetic material for further breeding. When starting their breeding programs, breeders should be able to know whether the material they intend to use has any restrictions. However, patent claims may be broad and difficult to interpret, making it almost impossible for a breeder to decide whether a plant variety is covered by a patent or not.

If there is no transparency on the patented status of biological material, breeders might be discouraged to make use of certain material, which – in practice – leads to the reduced use of genetic variability. The first step is therefore to improve transparency. But even when there is transparency, the availability for further breeding of a variety covered by the scope of a patent is practically blocked. Some countries included exemptions in national patent laws allowing for the free use of biological material for further breeding; however the commercialisation of a new plant variety incorporating the patented invention will still require a licence from the patent holder3. These hurdles may in the end slow down innovation in breeding significantly.

Szonja CsörgõDirector Intellectual Property and Legal Affairs at the European Seed Association (ESA)

Plant breeding and IP

For those who follow the development of the plant breeding and seed industry in Europe, it is a well-known fact that IP protection has been a hot topic of debate over the past 15-20 years. The essence of plant breeding is to improve the quality, diversity and performance of crops which respond to consumer demand and societal needs. The basis of plant breeding is genetic variability which is first observed by the breeder to identify useful traits and to create further diversity through a number of crosses to have a good basis to select from. Through several years of crossing and selection, new plant varieties are then developed.

Plant breeding is a time-consuming and high-investment business with long term goals resulting in high-value but easy to copy products1. In order to be able to get a return on their investments, plant breeders therefore need IP protection on their products (plant varieties). This is ensured by the UPOV-type plant breeder’s rights (PBR) system, which provides a good balance as it protects breeders against copying but at the same time also ensures that free access to protected varieties for further breeding and commercialisation is safeguarded, through its unique and key feature, the breeder’s exemption. For centuries, plant breeders have relied on this continuous free flow of material which has resulted in open and continuous innovation for the benefit of all.

Due to modern technology and continuous development, new tools appeared also in plant breeding allowing breeders to conduct part of their work in the laboratory, which reduces the development time of a variety. Plant breeding still remains based on classical crossing and selection work to a large extent,

Patents and plant breeders’ rights – how transparency helps

1 The average R&D investment of the plant breeding industry is around 4-20% of its annual turnover, depending on the specific crop.2

See in particular Article 64 EPC; Article 4(2) and Articles 8 and 9 of Directive 98/44.3

In the Unified Patent Court Agreement, a similar, limited breeder’s exemption has been included under Article 27(c). However, the UPC Agreement has still not entered into force 5 years after its adoption, thus the limited breeder’s exemption still does not exist in most EU Member States.

Europe’s plant breeding and seed sector in a nutshell

Europe’s plant breeding sector is quite diverse. There are around 7,000 European seed companies, often however with very different business models.

While some are only active in R&D and breeding, others also have activities in seed production or marketing, and some of the biggest multinationals often also have activities in plant protection products.

The differences in business models however are also linked to the fact that some companies are only active in a few crops while others might have multi-crop portfolios, and a business strategy that works for one crop might not work for another.

The total value of the European seed market is estimated around 7 billion €. Approximately 39% comes from cereals, 26% from maize, 14% from seed potatoes, 11% from vegetables, 4% from oil and fibre crops, 3% from sugar beet and 3% from grasses.

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Where are we now?

Since the lack of transparency has been identified as being key in the interface problem, the European Seed Association (ESA) committed itself to work on improvements in this regard. In 2013, ESA launched its PINTO (Patent Information and Transparency On-line) database which provides the link between varieties and patents, a unique piece of information not available in other databases. In PINTO, users can search by varieties, species or patents and can obtain information as to whether the variety they are looking for is covered by the scope of patents. PINTO has almost 1,000 users by now and provides information for over 700 varieties in 30 species that have been offered for commercialisation within the territory of the European Economic Area. It is important to note though that inclusion of information in PINTO is voluntary and is based on the willingness and interpretation of individual companies who develop plant varieties covered by the scope of patents. The database is highly valued by its users and efforts are continuously carried out to optimise its coverage and expand its scope.

Transparency is key in this discussion but it does not solve everything. However,

recently European patent legislation has also improved. The Interpreting Notice issued by the European Commission in November 2016, followed by the changes in the Implementing Regulations of the European Patent Convention, brought important changes. As a result, patenting of products obtained by essentially biological processes (i.e. breeding methods based on crossing and selection) is not possible any more under European patent law. Patents will however continue to

be present in plants and plant varieties, and mechanisms should be put in place to ensure that the improvements already achieved are not circumvented and that patents are not granted in a way which jeopardizes access to biological material for further breeding. Although the changes are rather recent and more time is needed to analyse the details, it seems that the discussion on IP protection for plants and seeds will continue in the coming years.

Screenshot from the PINTO database

Patent Information and Transparency On-line (PINTO) database

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possibility of an exchange between the two Offices of trainees with technical background under the Pan-European Seal Professional Program.

This opening context also led to constructive initiatives such as the setting up of a specific EPO-CPVO working group on the integration of CPVO data in the EPO databases, made up of experts with IT, legal and technical backgrounds from both Offices. Heretofore, the working group has already met on several occasions and the most visible result of these meetings has been the drafting of an agreement on the provision of documentation by the CPVO relating to the official variety descriptions and non-confidential technical questionnaires.

In addition, the EPO appointed patent examiners of the EPO Directorate 1120 (plant field) as EPO representatives to attend the CPVO crop sector expert meetings as well as the CPVO annual meeting with its Examination Offices.

Another important dimension of the EPO-CPVO co-operation is the external communication of common key messages.

Community Plant Variety Office

The Community Plant Variety Office (CPVO) has maintained since its inception regular contacts with the European Patent Office (EPO).

On 11 February 2016 Mr Martin Ekvad, President of the CPVO, and Mr Benoît Battistelli, former President of the EPO, took an important joint step forward and signed the Administrative Arrangement No 2016/0009 on Bilateral Co-operation between the EPO and the CPVO for a period of three years.

This agreement establishes a wide-ranging flexible mechanism for guiding and channelling mutual co-operation based on the reciprocal understanding of each other’s Intellectual Property Right (IPR) system and practices. The Administrative Arrangement aims at defining common approaches, at responding to technological and legal developments, and at increased efficiencies at the operational level.

The scope of the EPO-CPVO co-operation encompasses several activities consisting in the exchange of information and best practices in the area of plant-related patents and PVRs. These activities and the conditions applicable to them have been detailed in an Implementation Plan adopted as an Annex to the Administrative Arrangement.

As regards the activities carried out under the agreement, a first joint workshop was organised on 21 and 22 September 2016 in Angers at the CPVO premises. This activity was targeted at providing the attendees of the EPO and the CPVO a solid basic understanding of each IPR system, respectively. A second joint workshop followed on 30 March 2017 in Munich at the EPO premises, whereby a constructive exchange on practical examples clarified many specific aspects and facilitated the identification of areas of convergence. Two separate meetings were conducted concurrently on this same day: one focused on the sharing of expertise in quality matters whilst, the other, was centred on the

For this purpose, on 29 November 2017 the EPO-CPVO Joint Conference “Supporting Innovation in the Plant Sector” took place in Brussels. It attracted some 200 participants from industry and academia, the European Commission, the European Parliament, legal practitioners, national patent offices, NGOs and the general public. In a nutshell, this conference illustrated the way in which the CPVO and the EPO co-operate to support innovation in the plant sector and promoted their relationship as a positive co-operation of organisations which strive to increase technical awareness, transparency and legal certainty in the plant IP sphere.

Overall, the joint activities organised within the framework of the EPO-CPVO Administrative Arrangement on Bilateral Co-operation have successfully contributed to the enhancement of the co-operation between the EPO and the CPVO.

The Administrative Arrangement No 2016/0009 on bilateral co-operation between the European Patent Office and the Community Plant Variety Office

The CPVO headquarters in Angers, France

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an essentially biological process are also excluded from patentability5.

The amendments were adopted by the EPO Administrative Council on account of the EU Commission Notice of 8 November 20166, which set out its view on how the EU Biotechnology Directive is to be interpreted. The amended rules are aimed at providing legal certainty and ensuring uniform application of harmonised European patent law by bringing the EPC into line with the Commission‘s interpretation in that notice.

Scope of the exclusion of products of essentially biological processes

Important clarifications of the relevant practice are contained in the document accompanying the adopted amendments to the Implementing Regulations7. The exclusion from patentability extends to plants and animals exclusively obtained by means of an essentially biological process where there is no direct technical intervention in the genome of the plants or animals. As clarified by the term exclusively, a plant or animal originating from a technical process or characterised by a technical intervention in the genome remains patentable, even if an additional non-technical method (crossing and selection) is applied in its production.

Patentable subject-matter

Rules 26 ff. EPC set out the requirements governing patenting of biological material. On this basis, the clarified practice is to treat as patentable plants or animals produced by a technical process which modifies the genetic characteristics of the plant or animal, i.e. it does not merely enable or assist the

European Patent Office

Agriculture is the first industry, from ancient times, relying on innovation for food security, food safety and improved nutritional value of food. Recently, fuel and pharmaceutical production have been added to the enterprise. Vital to the growth of agribusiness is the protection of innovation via intellectual property rights protection of technologies ranging from new seed development to new breeding techniques and precision agriculture.

In recent years, a number of legal developments have taken place which shaped the framework of protection of plants or animals exclusively produced by essentially biological processes. Following decisions of the EPO Enlarged Board of Appeal1, the European Parliament adopted a resolution2, asking the EU Commission to clarify the matter under the EU Biotechnology Directive3. Some EPO member states had also introduced national legislation explicitly excluding products of conventional breeding methods from patentability4.

Under the European Patent Convention (EPC), European patents cannot be granted in respect of plant or animal varieties or essentially biological processes for the production of plants or animals (Article 53(b) EPC). Amendments made to the Implementing Regulations to the EPC (Rules 27 and 28(2)) in July 2017 clarified that plants and animals exclusively obtained by

performance of the essentially biological process steps, provided the invention is not confined to a particular plant or animal variety. This approach means that transgenic plants or animals and technically induced mutants, such as those resulting from targeted (e.g. CRISPR/Cas) and random (e.g. induced by radiation or chemicals) mutation, remain patentable.

Patenting inventions relating to plants and animals at the European Patent Office

1 In G 2/12 and G 2/13 (OJ EPO 2016, A27 and A28, known as “Tomatoes II” and “Broccoli II”) the Enlarged Board of Appeal found that the exclusion of essentially biological processes for the production of plants in Article 53(b) EPC does not have a negative effect on the allowability of a product claim directed to plants or plant material such as a fruit.2

P8_TA-PROV(2015)0473: European Parliament Resolution of 17 December 2015 on patents and plant breeders‘ rights, 2015/2981(RSP).3

Directive 98/44/EC, Official Journal of the European Communities L 213 of 30 July 1998.4

Germany (Article 2a(1) No. 1 of the German Patent Act), France (Article L 611-19 I.3bis of the French Code of Intellectual Property), Italy (Article 81quater(e) of the Italian Industrial Property Code) and the Netherlands (Article 3(1)(d) of the Dutch Patent Act).5

Rules 27 and 28(2) EPC, as in force from 1 July 2017, OJ EPO 2017, A56.6

EU Commission Notice C/2016/6997, Official Journal of the EU C 411/3 of 8.11.2016.7

Document CA/56/17, available at www.epo.org.

Under Article 53(b) EPC, European patents cannot be granted in respect of plants or animals exclusively obtained by means of an essentially biological process. (Rule 28(2) EPC)

EPO measures to ensure high quality standards in examination of applications relating to plants and animals:• Processing of applications in this

field is carried out in a single, specialist area.

• The decision to grant a patent in the field of plants and animals is taken by the three person examining division, highly specialised in this technical field.

• If need be, examining and opposition divisions include a legal member.

• Examiners in the relevant technical areas are provided with clear information and training to ensure compliance with new instructions and practice.

• A well-established and effective monitoring and quality control system is in place for any sensitive file involving plants or animals

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Genetic engineering techniques applied to plants are also in principle patentable. Plant- or animal-derived compounds or products such as DNA, fatty acids, sugars, etc. remain patentable independently of the plant or animal source.

Disclaimer practice

One aspect of the clarified practice applicants must bear in mind is that, whenever a technical feature of a claimed plant or animal might be the result of either a technical intervention or an essentially biological process, a disclaimer is required in order to limit the claimed subject-matter to the technically produced plant. A disclaimer is required even if it relates to subject-matter that was not disclosed in the application as filed (Decision of the Enlarged Board of Appeal in G 1/16 “Disclaimer III” of 18.12.2017).

In line with the EU Biotechnology Directive, biological material which is isolated from its natural environment or produced by means of a technical process, even if it previously occurred in nature, is in principle patentable, Rule 27 EPC.

More detailed information is available in the 2017 edition of the Guidelines for examination in the EPO (G-II, 5.2(ii), 5.3, 5.4 and F-IV, 4.12); additional information will be published in the 2018 edition.

For more information, visit the EPO website.

It is no wonder that the industry has reacted so bitterly to the CJEU positioning (eg European Seed, 2018). The CJEU ruling entails a sort of, second1, moratorium on the development of new crops by means of modern techniques of biotechnology. After the CJEU ruling,

are excluded from the scope of that directive.’ In other words, the Court considers that the exclusion contained in Annex I B of the Directive 2001/18/EC of organisms improved through mutagenesis should not apply to those engineered through NBT.

Dr Juan Antonio Vives-Vallés Assistant Lecturer at the University of the Balearic Islands

The New Breeding Techniques (NBT) like CRISPR-Cas9, the last breakthrough in plant breeding innovation (eg Jorasch, 2016), face in Europe a crucial legal challenge that conditions the future of plant breeding as well as the balance between Patents and Plant Breeder’s Rights (PBR). This challenge can be summarised in the following query: Are plants improved using NBT genetically modified organisms (GMO) according to the directive on the deliberate release into the environment of GMOs?

This issue has been recently answered by the Court of Justice of the European Union (CJEU) in the Judgment of 25 July 2018, Confédération paysanne, C-528/16, C:2018:583. The Court ruled that ‘only organisms obtained by means of techniques/methods of mutagenesis which have conventionally been used in a number of applications and have a long safety record

The balance between IP systems and the future of crop innovation in Europe in the light of the New Breeding Techniques

1 At the beginning of the 21st century the biotech industry in Europe already suffered what was named the ‘de facto moratorium’. See e.g. the WTO dispute settlement decisions DS291, DS292 and DS293.

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Dr Juan Antonio Vives-Vallés University of the Balearic Islands

breeders will need to go through the costly (Jorasch, 2016) process applicable to GMO; if they get the approval, they will be obliged to label the new crops as GM, to be (most likely) finally rewarded by member States either with demands to exclude their territory from their cultivation, or with later applications of national measures to ban their cultivation2.

In practice though, as these NBT may be used in a way that they leave no trace (eg Jorasch, 2016; National Academies of Sciences Engineering and Medicine, 2016), some breeders may decide to use them without declaring it (as implied by Jorasch (2016)), if not already doing it. And surely, Europeans will end up buying them from third countries, either for the industry, for food and feed or even (unknowingly) for cultivation.

However, at some point, either because the NBT are no longer so new and a ‘long safety record’ is appreciated, or because the overwhelming weight of the EU contradictions (see eg McHughen, 2007) forces a revision of the EU approach towards biotechnology, crops improved by these techniques (or by newer techniques still to come) will likely be formally among us. When this time comes, the Plant Variety Right (PVR) system will confront an existential challenge. There is a rather broad agreement on the patentability of new crops developed either through mutagenesis or through NBT (EPO, 2017; European Commission: DG Growth, 2016). The confluence of a boom in the use of the NBT could move the breeders towards the patent system, seduced by a stronger protection (Dutfield, 2011; Kiewiet, 2003, 2004). The consequence will likely not be the sudden disappearance of PVR (Dutfield, 2011), but the breeder’s exemption as well as in some countries also the Farm-Saved Seed could be threatened (Kiewiet, 2003, 2004), and the pressure on the PVR system to become more patent-like will probably increase. Besides, the closer the systems, the more criticism about the need of keeping two

protection systems will grow. In the long run, this context will place PVP systems between the rock and the hard place.

The amendment of rule 28(2) of the Implementing Regulations to the EPC to ban patents on ‘plants or animals exclusively obtained by means of an essentially biological process’ does not look as being the end of the Tomato and Broccoli wars, but only a temporary truce. Are PVP offices prepared to face an all-out war? According to the teachings of the best literature in business strategy (see particularly Porter (1985)), it seems that only a combined answer based on ‘cost leadership’ and, overall, ‘differentiation’ will be able to offer enough chances of success in the long run.

References

• Dutfield, G. (2011). Food, Biological Diversity and Intellectual Property: The Role of the International Union for the Protection of New Varieties of Plants (UPOV). Global Economic Issue Publications, QUNO Intel, 1.

• EPO. (2017). 5.4 Plant and animal varieties, essentially biological processes for the production of plants or animals. Retrieved September 7, 2018, from https://www.epo.org/law-practice/legal-texts/html/guidelines/e/g_ii_5_4.htm

• European Commission: DG Growth. (2016). Final Report: of the Expert Group on the development and implications of patent law in the field of biotechnology and genetic engineering (E02973) of 17 May 2016.

• European Seed. (2018). Case C-528/16 Reaction: A Bleak View For Agricultural Innovation in the EU. European Seed.

• Jorasch, P. (2016). How Much Plant Breeding Innovation is Politically Intended? European Seed, 3(2).

• Kiewiet, B. (2003). Relation between PVP and Patents on Biotechnology.

• Kiewiet, B. (2004). Principles, procedures and recent developments in respect of the Community Plant Variety Protection system. Frankfurt.

• McHughen, A. (2007). Fatal flaws in agbiotech regulatory policies. Nature Biotechnology, 25(7), 725. http://doi.org/10.1038/nbt0707-725

• National Academies of Sciences Engineering and Medicine. (2016). Genetically Engineered Crops: Experiences and Prospects. Washington, D.C.: The National Academies Press. http://doi.org/10.17226/23395

• Porter, M. E. (1985). Competitive advantage: creating and sustaining superior performance. New York: FreePress.

2 Possible under art 26 b of the Directive 2001/18/EC introduced by the Directive (EU) 2015/412, as already happened with GM maize event MON810 (see

Commission Implementing Decision (EU) 2016/321 of 3 March 2016 adjusting the geographical scope of the authorisation for cultivation of genetically modified maize (Zea mays L.) MON 810 (MON-ØØ81Ø-6)).

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Robots may soon be spotted in a field near youVitirover is a remarkable European invention and the first robot mower which is able to cover surfaces as large and difficult as vineyards and power station parks. Not only it is solar powered and GPS connected with centimetre precision, this small robot also reduces the widespread use of toxic herbicides.

To understand the role of intellectual property in Vitirover’s success, 4iP Council, an association dedicated to developing high quality academic insight and empirical evidence on topics related to IP and innovation in Europe, speaks to serial-entrepreneur Arnaud de la Fouchardière, one of Vitirover’s two founders and the CEO of the European SME it has enabled.

INTERVIEW

How did the invention of Vitirover come about?

The robot is the result of years of teamwork but the person who perceived the need for such a technical solution was Xavier David-Beaulieu, Vitirover’s co-founder and technical director. Xavier had already founded a number of technology companies before investing his energy in St Emillion wine production, his family’s business. The discord between fragile vines, Xavier’s desire to produce precious wine, enormous tractors and polluting herbicides, like the infamous glyphosate called Roundup, gave life to a vision of replacing a monster oil-powered machine with a host of small ecological autonomous ones.

Patent applications were filed early on and over a period of six years, those closely involved in Vitirover’s development adapted its characteristics to overcome such issues as autonomy throughout the summer, ability to free itself when stuck, 100% coverage on any terrain, shade management and other challenges.

What was your approach to developing the Vitirover?

Eighteen months is the popular window for product readiness but for Vitirover it took six years and, in the meantime, we had to pay our engineers and finance the prototypes. Ours is a bottom-up invention. We were not adapting an existing machine, we were developing a new vegetation management tool that had to be economic, ecological, simple and worry-free, responding to the feedback we received from clients. This has taken five generations of prototypes.

The Americans say fail fast and the French say one should not confuse determination

with stubbornness. I believe the secret is to navigate between the two. Entrepreneurs have to take a long-term perspective while managing the risk of failure.

How did you fund your research for the innovation?

We established the company in 2011 and used every means available for financing it: personal funds, leveraging our contacts, third parties from the world of wine production, local grants, grants from the French public investment bank, BPI France, as well as European financing. We led a project under the European Commission’s Eco-innovation initiative, which is part of the EU's Entrepreneurship and Innovation Programme. This released two million euros, half of which was publicly funded. We also ran two crowdfunding operations and returned our salaries into the business.

The financial risk has been considerable but that is also a part of the game.

In our search for funding, one thing we discovered is that many traditional investors did not seem to understand us well. That is why we turned to the professionals of our environment (industrialists from the world of agriculture and industry like landscaping/

vegetation management) rather than traditional venture capitalists.

At what point and why did you consider IP?

We filed an international patent (PCT) early on but quickly realised that our original design was transforming too much for the cost of maintaining this patent to be worthwhile. So, we postponed our work on IP to a later date when we knew our ideas were well developed and difficult to keep secret. This was when we began a very successful relationship with France Brevets, an investment fund dedicated to international patent licensing. France Brevets aims at developing long-term partnerships with its partners to facilitate strategic and valuable patent portfolio creation and worldwide monetisation.

France Brevets met us with a specialist team and within a long-term framework that included a brainstorming day, where we came up with six patents covering very specific innovations. They also began drafting our applications in English, something that was not evident when you consider the technical language involved. Now, they are helping us exploit the patents, through techniques such as licensing. They have advanced €150,000 and have patent ownership until this debt is paid off at which point the patents return to us. In the meantime, Vitirover operates under an exclusive license.

‘’There is one autonomous land robot on Mars called ‘Curiosity’ and one on Earth called ‘Vitirover’. Both ‘Curiosity’ and ‘Vitirover’ consume one watt per kilogramme. The robot weights 20 kilos and consumes 20 watts, that is the same as the light that brightens your fridge when you open the door.”

Arnaud de la Fouchardière

Vitirover mowing a vineyard

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What advantages did owning IP bring you? What was enabled?

With the right IP tools in place, what worked well for us was over-communication and we were able to do this because we had filed patents and protected ourselves from copying. This brought us to the attention of the France's national state-owned railway company, SNCF. The SNCF spends 30 million Euros a year on glyphosates and had estimated that the cost of maintaining French railway lines could rise to 500 million Euros if the European Commission outlawed glyphosate. Our solution was very interesting to them and, in August 2017, they gave us a first contract. This led to an additional collaboration and to our relationship with Enedis, the organisation responsible for the transport of electricity in France. We also responded to competitions and, as a consequence, have developed relations with the German group BayWa, an international leader in trade and services for the agriculture and energy sectors.

The fact that we are working with France Brevets, and have a number of patents to protect our ideas and the investments behind them, reassures clients and partners about our stability as a company. Owning patents also makes collaboration more interesting for us: they are a strategic bargaining tool and can be used to generate revenue through licensing.

What is the performance and size of the company now?

We currently have eight employees and by 2021 we expect to have 181, most of whom will be ‘shepherds’ which is the term we use for Vitirover controllers. One shepherd can manage a ‘herd’ of 100 Vitirovers. Most of the time the machines are serviced by distance through the Cloud.

This shows that the investment in patents and the decision to give Vitirover EU funds has paid off economically and in terms of EU job creation.

What advice would you offer other European inventors, in particular in relation to IP?

IP is both very important and very complex. You need to do more than just take one-off advice as it is about a whole valorisation strategy. It is important to be accompanied by people who understand the strategic relevance of IP.

Knowing when to patent was a challenge for us. It is a critical question. In hindsight, we realise that we patented too early as our design has evolved greatly. Patenting is extremely expensive to maintain, but it does

represent a real asset for a company, large or small, because there are many ways that a patent can be leveraged. For us, such protection has been crucial to detail our technologies with large enterprises and partners with whom we wish to collaborate. We have also found that equity investors often want evidence that a business has taken steps to secure the fruit of its R&D and we see the licensing of our patents as a potential stream of revenue we can use to further our research. Our patents are also a powerful reputation enhancement tool that adds value to our brand.

Xavier David-Beaulieu and Arnaud de la Fouchardière, founders of Vitirover

Vitirover maintaining railway lines

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The variety owner may often be tempted to protect the same name as used as the variety denomination for the protected variety as a trade mark. Often, the variety name has more than the function to give a name to the variety (“name function”). On the one hand it may be chosen to promote the variety with some attractive name (“publicity function”), something perfectly compatible with plant variety law. On the other hand, the breeder may wish to also use the variety name to indicate that the variety comes from his or her company (“function of origin”) and to have exclusive rights on the trade mark even beyond the term of protection of the variety.An advantage with a trade mark is that it can be renewed forever as it is not limited to a maximum number of years (as opposed to a registered variety), it receives a broader, different protection, easily beyond the specific variety. Also, different trade marks may be used for different territories, adapting to local language.

However, it is not possible to register the name that has been registered as a variety denomination as a trade mark for a variety of the same or closely related species. Under general rules, a trade mark that corresponds to the name of the product must not be protected for that product, as competitors should be free to name the product without obstacles. The application for the trade mark “beer” for beer would be refused, being the name of the product, under absolute grounds for refusal (Art. 7(1)(c) EUTMR). The application of the trade mark “Geisha” for roses of the variety ‘Geisha’ would be refused, being the name of the product, under the same logic. This is particularly important when thinking of the time after the variety protection has expired.

Recently, the EU trade mark law legislator has emphasized the incompatibility of variety names and trade marks by introducing a new absolute ground for refusal for variety names applied for as trade marks. The absolute ground is harmonised law and exists hence for European Union trade marks (Art. 7(1)(m) EUTMR) and for national marks in the Member States of the European Union. The variety owner may still use trade marks to refer to its company; however, the trade mark may not consist of the name of the variety or reproduce it in its essential elements.

Francesco MattinaVice-President of the CPVO Philipp von KapffMember of the EUIPO Boards of Appeal

A variety denomination is the generic designation of a plant variety, the name given to it typically by its breeder. A protected plant variety must always have a denomination that allows its identification on the market, as the latter is a requirement for registration under Article 6 of Regulation 2100/1994 (also known as the “Basic Regulation”). The same Regulation also furnishes indications on what is considered a suitable designation (e.g. it cannot be merely descriptive of a characteristic of the variety or be misleading).

The generic character of the variety denomination also reflects on the obligation of use provided by Article 17 of the Basic Regulation. Anybody making the variety constituents of a protected variety available for commercial purposes must use its variety denomination. This obligation persists also after the expiration of the IP right on the variety. Variety constituents are entire plants or parts of plants capable of producing entire plants.

It is crucial, in fact, to distinguish between the protection afforded by the IP right on the variety and its generic designation, which does not consist of the IP right to a name but refers to an obligation for stakeholders (holder of the right included) to use the very same designation in order to correctly identify the variety on the market.

In other words, the law makes sure that everyone rightfully holding the variety constituents has the right and duty to use the generic name of the variety, keeping said use free from any exclusive monopoly. This also explains why the obligation to use the variety denomination provided by the Basic Regulation persists after the expiration of the IP right on the variety.

Due to Article 20 of the international UPOV convention, this obligation does not only apply beyond the term of protection, but as well on a worldwide level in all of the more than 70 UPOV countries. Each variety in principle shall have only one name.

Trademarks and variety denominations

The views expressed herein are the views of Philipp von Kapff alone and do not necessarily represent the views of EUIPO.

Francesco MattinaVice-President of the CPVO

Philipp von KapffMember of the EUIPO Boards of Appeal

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The European IPR Helpdesk N°31, October - December 2018

Colombian Coffee Growers Federation (FNC), more than 540,000 families are involved today in the coffee sector in Colombia, including indigenous communities. It demonstrates that GIs represent a tremendous development tool also for commodity-producing countries.

With a growing world population (projected - according to the United Nations - to reach 9.8 billion by 20503), and its implications in terms of quantity and quality of available food, use of water and impact on the overall environment, agriculture faces today the challenges associated with sustainability, with its economic, environmental and social components. In other words, value chains are rethinking their business model to be able to continue to generate value, and to provide for the needs of a growing world population, taking into account social and environmental objectives, so that the ability of future generations to meet their own needs is not compromised4.

Ensuring sustainability is not just a “moral”

Massimo Vittori Managing Director of oriGIn

Geographical Indications (GIs) are a type of IP rights (IPRs) which offers a powerful differentiation tool to products deeply rooted in defined geographical areas. The natural features, as well as the tradition and culture, peculiar to certain geographical environments, confer unique features to GI products. Through GIs, the quality and tradition of such goods are protected and preserved, creating value for millions of producers, processors and distributors around the world.

Currently, there are some 8,000 GIs recognised around the world1. While not limited to agriculture, GIs play a crucial role in this sector. By way of example, in the European Union (EU), where farmers can continue to compete on international markets only relying on quality rather than price, the worldwide sale value of the GIs is estimated at € 54.3 billion2. Likewise, according to the

Geographical Indications and sustainability: challenges ahead for the agricultural sector

obligation, commercial considerations start to play an important role in the debate. The generational shifts represented by “millennials” becoming a major driver of change in consumer behaviour, brought the attention of big companies and retailers to local, original and small products that can be trusted. Boston Consulting Group estimates that between 2011 and 2016, large US consumer groups lost $22 billion in sales to smaller brands. Sustainability is becoming a major factor influencing consumer behaviour.

The United Nations Sustainable Development Goals (SDGs) are the blueprint to achieve a more sustainable future. They address the major global challenges that we face.

With respect to several SDGs, such as the ones related to poverty, hunger, health, gender equality, decent work, climate and environmental degradation, the agricultural sector - and GIs within it - are called upon to provide answers.

1 See oriGIn Worldwide GIs Compilation, available at www.origin-gi.com/i-gi-origin-worldwide-gi-compilation-uk.html 2

Value of production of agricultural products and foodstuff, wines, aromatised wines and spirits protected by a GI, 2012.3

United Nations Report, Department of Economic and Social Affairs, 2017, available at www.un.org/development/desa/en/news/population/world-population- prospects-2017.html 4

United Nation, Report of the World Commission on Environment and Development (Brundtland Report), 1987. Sustainable development is defined as the development that meets the needs of the present without compromising the ability of future generations to meet their own needs.

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The European IPR Helpdesk N°31, October - December 2018

Historically, long before the civil society started to question companies and brands concerning their impact on the environment and the social welfare of their employees and communities, GIs have been sensitive to issues such as gender equality, decent work, climate and environmental degradation. First of all, with respect to environmental issues, GIs cannot switch production elsewhere, as “delocalisation" is not compatible with the GI scheme itself. Resources and natural capital in a given geographical area must be conserved for GIs to continue to exist and thrive in the long term. This is why several GIs, while adapting to consumer tastes, have been in existence for centuries. Moreover, from a social and economic perspective, GIs are an integral part of their communities. Their ability to generate and fairly distribute value for all relevant stakeholders along the chain is a key factor in their success. This is achieved through a “local value chain governance” which allows relevant stakeholders to be represented within structures such as “consejo reguladores”, “associations interprofessionnelles”, “consorzi”, etc.

From a more general point of view, in this context, it is worth mentioning that independent controls are fundamental in the implementation of any rigorous sustainability policy. Also in this area, GIs fit the new mindset that sustainability requires. Economic actors in GIs value chains - farmers, producers, processors and distributors - are in fact used to independent audits. Such controls are required, before

products are commercialised, to make sure that the qualities announced in products’ specifications are delivered to consumers. Therefore, adapting to sustainability audits might prove to be easier for GIs.

For all these reasons, GIs are in a strategic position to respond to the sustainability challenges of our time, and even represent a model for other economic sectors embarking on such a process. This does not mean that GIs are sustainable by nature. An effort to understand the needs of each value chain, taking into account the specificities of the sector in which they operate, as well as the priorities of consumers, is required. Evaluating “objectively” sustainability performances is also crucial in terms of credibility. Some GIs are pioneers on this. For instance, the “Confederazione Nazionale dei Consorzi Volontari per la Tutela delle Denominazioni dei Vini Italiani” (Federdoc) has recently developed a standard - Equalitas - for the sustainability of agrifood and wine supply chains, which is being adopted by the Italian wine industry. The FNC recently received this year the Rainforest Alliance Sustainable Standard-Setters Award for its commitment to sustainability, improving coffee farmers’ livelihoods and conserving forests.

The French DOP “Comté” conducted over the years several studies demonstrating that the breeding and agricultural practices, required in the relevant geographical area for the production of Comté cheese, contributed to preserve the land biodiversity.

Given these premises, oriGIn and the Food and Agriculture Organisation of the United Nations (FAO) have developed a “GIs & sustainability strategy” to encourage GI associations around the world to look at their potential in this field and engage with local stakeholders to give full visibility and/or improve their sustainability performance.

More information:https://www.origin-gi.com

Massimo Vittori Managing Director of oriGIn

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The kind of organised crime that we are facing today resembles a veritable criminal enterprise, with different members operating globally and contributing in different ways to the maximisation of profits.

Consumers would rarely buy a fraudulent food product if they knew its nature, but criminals involved in this activity are able to present their products as genuine and can infiltrate the legitimate supply chain in various ways. Cases have been registered where criminals were able to have their products distributed by supermarkets, bar and restaurants, often with serious and deadly consequences for consumers.

This trend is even more alarming if we take into consideration the progressive acquisition by organised crime of legal activities, including the ownership of business entities. This allows criminal organisations to operate as legitimate business operators, giving them more possibilities to reach consumers if, for instance, they acquire control over food distributors, hotels, restaurants and supermarket chains. Such practices, which are also facilitated by corruption and the use of front men and front organisations, have been detected in different Member States.

These trends also make it more and more difficult for law enforcers to identify illicit practices and to intervene – if not discovered, the control over a legitimate business gives criminals the possibility to operate in a specific field without raising suspicion.

Recent trends also show a progressive shifting of organised crime interest towards areas that are not considered as highly sensitive and therefore are not under the radar of the law enforcement. This is the case, for instance, of the production and trade of plant varieties and vegetables. Cases have been

Marco MusumeciUnited Nations Interregional Crime and Justice Research Institute (UNICRI)

Counterfeiting and food frauds are growing threats, which put consumers at risk, create exploitation of vulnerable segments of the population, affect countries’ tax revenue and reduce resources that could be used for public services. These criminal activities also represent an infringement of IP rights.

The alteration of food products has become a consolidated illicit business which is often managed by criminal organisations. They are attracted by the high profits attainable and by the comparatively low risks associated with the perpetration of these crimes. As in the case of the wider counterfeiting phenomenon, also for food fraud and food counterfeiting, criminal organisations involved in this illicit business are often aiming at differentiating their activities, multiplying the possibilities through which they can reinvest illicit profits and/or generate new ones.

When we refer to organised crime involved in food fraud, we very often mean the same criminal organisations involved in other types of serious crimes, such as drug trafficking, extortion or trafficking in human beings. The interest of organised crime in food fraud derives from the fact that modern criminal organisations are trying to exploit every profitable possibility (being it licit or illicit); they diversify their investments, take advantage of new technological tools and form alliances with other transnational groups.

Counterfeiting and food frauds

investigated where criminal organisations were directly managing the illicit production of vegetables, their transport and selling to restaurants and supermarkets. Apart from the violation of related IP rights, these illicit practices put at risk the health and safety of consumers, especially when vegetables are grown on polluted soil, treated with toxic chemicals and watered with polluted water. Given the frequency of scandals concerning illicit dumping of toxic waste operated by organised crime in different territories, we should not underestimate the seriousness of these practices and the serious consequences they may have for consumers.

UNICRI has also highlighted the increasing involvement of organised crime in the production and trade of illicit pesticides, a large and growing market that present numerous health, environmental, and economic hazards for food production.

Marco MusumeciUnited Nations Interregional Crime and

Justice Research Institute (UNICRI)

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The application

Pixley Berries Juice Limited (“Pixley”) is a UK company specialising in the processing of fruit, including blackcurrants, that result in a 100% “Not from Concentrate” (or “NFC”) juice which is then mainly supplied as an ingredient to bottlers across Europe.

According to Pixley, ‘Ben Starav’ had specific features (such as good adaptability across a range of climates and great organoleptic properties) that made it unique and ideal for 100% blackcurrant juice production, a market in which it was currently not available (‘Ben Starav’ only being used for the production of Ribena, a soft drink). Pixley Berries claimed that it would be in the public interest to make material of ‘Ben Starav’ available for the 100% juice market, which – in competition law cases – had been recognised by the European Commission to be a separate market from the “juice drink” market3.

Following several unsuccessful attempts to obtain a contractual licence, Pixley had no choice but to file an application for a compulsory licence.

The CPVO decision

In its decision on 17 May 2018, the CPVO rejected Pixley Berries’ application.

Assessing the case mainly on the ground of “the need to supply the market with material offering specific characteristics”, the CPVO concluded that Pixley Berries failed to provide evidence that ‘Ben Starav’ had “specific characteristics” that made it unlike other available varieties and was thus necessary for NFC juice production. Therefore, there was no “need to supply the market” with ‘Ben Starav’ material since alternative varieties could be used for the envisaged 100% juice production. The fact that critical stages of Ben Starav’s

Philippe de JongPartner at Altius, BrusselsElena BertolottoAssociate at Altius, Brussels

Compulsory licensing is an exception to the general rule under intellectual property (“IP”) law that an IP owner has the exclusive right to decide whether or not to license-out certain activities that require its consent.

In March 2017, a UK family-owned juice producer filed an application with the CPVO to obtain a compulsory licence for the blackcurrant variety ‘Ben Starav’, whose plant variety rights (“PVRs”) are currently owned by a large soft drink producer. This case gave the CPVO the opportunity to shed some light on the otherwise blurry line between the protection of PVRs and the public interest in access to the varieties thus protected.

The “public interest”

According to the applicable legislation, a compulsory licence can only be granted on the ground of public interest, which may, for example, consist of:

a) The protection of life or the health of humans, animals and plants;b) The need to supply the market with material offering specific characteristics;c) The need to maintain the incentive for the continued breeding of improved varieties.

The compulsory licence exemption is intended to take into account social benefits, such as access to important, beneficial, new plant products, especially where new plant varieties with specific requirements are not sufficiently made available to the market concerned1. Its underlying justification was to ensure that new varieties were made sufficiently available to the marketplace, under reasonable conditions2.

The first compulsory licence case before the CPVO: How to strike the balance between PVRs and the public interest?

development had benefited from public funding was held to be irrelevant for the assessment of the public interest.

Comment

The CPVO’s decision is welcomed to the extent that it is the first of its kind and will therefore most likely allow future applicants (and right owners) to assess what is meant by “public interest”. It is also good news for PVR holders, since the decision has set a very high threshold for obtaining a compulsory licence.

However, the decision also raises a number of questions and it is therefore perhaps unfortunate that it was not appealed. In particular, the CPVO failed to take into account the underlying UPOV rationale that protected varieties must be sufficiently

1 M. Llewelyn and M. Adcock, European Plant Intellectual Property, Oxford, Hart Publishing, 2006, p.511.

2 UPOV, “Actes des Conférences Internationales pour la protection des Obtentions Végétales 1957-1961”, Geneva, 1974.

3 The regulatory distinction between “juices” (which per definition contain 100% direct juice) and other types of juice drinks (which can contain anywhere

between 1 and 99% of such juice) also follows directly from Directive 2001/112/EC of 20 December 2001 relating to juices and certain similar products intended for human consumption, OJ L 10, 12.1.2002, p.58, as subsequently amended (the “Juice Directive”).

Philippe de JongPartner at Altius, Brussels

Elena BertolottoAssociate at Altius, Brussels

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supplied to the market. By then also defining that market so broadly and the need to supply it so narrowly, akin to an essential facilities exercise under competition law, the CPVO seems to have created an almost unsurmountable hurdle for compulsory licence applications to succeed. By essentially taking into account all other blackcurrant varieties as potential alternatives4 to ‘Ben Starav’, regardless of the harvest season in which they are to be used, the CPVO seems to have made it a self-fulfilling prophecy that there will hardly ever be a situation where a “need to supply” a given market can occur. Furthermore, it would seem that the CPVO has too easily set aside the public funding

element. When a substantial part (in this case approximately 25%) of the breeding of a variety benefits from public funding into research to create more climate-resilient varieties and then eventually such a variety is bred (and, according to the right owner’s own statements, stands out from all other varieties in respect of that characteristic), one can wonder whether the “public interest” is sufficiently served by restricting its use to a limited range of soft drinks distributed across a narrow geographical area.

Clearly, the threshold for obtaining a compulsory licence must not be set too low at a level where they become the default

situation each time a PVR holder refuses to grant a licence. However, the bar should also not be placed so high or the test should not be made so strict that essentially not a single compulsory licence application has any chance of succeeding. It is questionable whether this decision has struck the right balance.

The opinions expressed in this article are exclusively the authors’ own. The authors represented the compulsory licence applicant in the proceedings before the CPVO.

Today, with the challenges of climate change, urbanisation and an increasing population, there is a fundamental need for the development of improved plant varieties. However, without an effective system of plant variety protection, breeders have limited possibilities to make a return on their investment.

The UPOV Convention provides the basis for UPOV members to encourage plant breeding by granting breeders of new plant varieties an intellectual property right: the breeder’s right. In order to obtain protection, the breeder needs to file individual applications with the plant variety protection (PVP) Offices of UPOV members entrusted with the task of granting breeders' rights.

By making it easier for breeders to make applications for plant breeders’ rights (PBR), farmers and growers will get access to more varieties than in the past. Recent advances in

The International Union for the Protection of New Varieties of Plants (UPOV)

What is UPOV?

The International Union for the Protection of New Varieties of Plants (UPOV) is an intergovernmental organisation based in Geneva, Switzerland. UPOV was established in 1961 by the International Convention for the Protection of New Varieties of Plants (the “UPOV Convention”). The purpose of UPOV is to provide and promote an effective system of plant variety protection, with the aim of encouraging the development of new varieties of plants, for the benefit of society. As of today, UPOV has 75 members covering 94 States (see www.upov.int).

UPOV PRISMA: Quick and easy online tool for transmission of application data for plant breeders' rights

IT have created new possibilities to address current challenges in terms of resource management and administrative efficiency when submitting a PBR application.

What is UPOV PRISMA?

UPOV has taken the initiative to develop an online tool to assist breeders in making PBR applications with all participating PVP Offices, via the UPOV website.

For PVP Offices who have not yet developed an online application platform, UPOV PRISMA can also act as their national online application system.

UPOV PRISMA is very efficient for breeders because they are able to access the latest application forms of participating UPOV members online. They can access those forms from anywhere at any time, and they simply

4 Thus contradicting an earlier UK compulsory licence decision (Sacker / Meijer, UK Controller of PVR, 31 October 2001, EIPR 2002, 38) where it was held that “… the

Controller did not find it relevant that there were substitute varieties available for use in crisp manufacture in the same supply periods as Lady Rosetta”.

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need to select the crop and the country in which they want to make an application. It currently allows breeders to select from a list of 28 countries1, the Community Plant Variety Office of the European Union (CPVO) and the African Intellectual Property Organization (OAPI). See the list of countries on the picture, with a search feature available online.

For users of the CPVO system, the information can be transferred directly from UPOV PRISMA to the CPVO online system and vice-versa.

How does UPOV PRISMA work?

The multilingual functionality of UPOV PRISMA is also a major breakthrough in terms of usability for breeders. The interface can be displayed in a choice of languages (French, English, Spanish, German, Chinese, Japanese, Korean, Turkish and Vietnamese). For instance, a Chinese breeder can access, in Chinese, the questions for a PBR application to be filed in the Netherlands for a rose variety. The tool will then automatically translate much of the application (especially in the technical questionnaire where breeders

need to complete all the information and characteristics in relation to the variety) into the language in which the application must be submitted. Having access to drop-down lists with pre-filled information extracted from the UPOV Technical Questionnaire (TQ) or national/regional characteristics helps the breeder to select the relevant information and to have it translated into the language required by the country selected. Breeders only need to provide the remaining free text translations!

Breeders are able to re-use data information from a previous application for the same

variety in a different territory, or start a completely new application and submit their applications online.

UPOV PRISMA provides the flexibility to fit the needs of each breeder. For instance, if you need to have a large number of people from the same company accessing the system or one specific pending application, you can assign different roles in the tool according to the responsibility of each member of the team. Alternatively, one person can complete

1 Argentina, Australia, Bolivia (Plurinational State of), Canada, Chile, China, Colombia, Costa Rica, European Union, France, Georgia, Kenya, Mexico, Netherlands,

New Zealand, Norway, Paraguay, Republic of Korea, Republic of Moldova, Serbia, South Africa, Sweden, Switzerland, Tunisia, Turkey, United Kingdom, United States of America, Uruguay, Viet Nam.

the process by themself, from the creation of the breeder account, the completion of the application form (including the technical part), to application submission and making payment online via the secured interface. UPOV PRISMA allows breeders to monitor and track submitted applications.

Why is UPOV PRISMA of interest for IP agents?

Breeders can also assign the role of an agent when they want to outsource the work or when they need a local representative in the selected country. UPOV PRISMA is relevant for agents as it offers them a means to publicise their work. For instance, once an agent has created their “agent” account in UPOV PRISMA, their contact details are visible to applicants in UPOV PRISMA who wish to find an agent in a particular country. Registered agents in UPOV PRISMA can help applicants with specific parts of the application procedure or complete the entire PBR application on their behalf.

Would you like to know more about UPOV PRISMA?

Go to the UPOV PRISMA Website to see how to get started. The UPOV PRISMA Team remains at your disposal to provide you with additional information or to guide you through the process and reply to your questions (prisma@upov.int).

UPOV PRISMA is continuously adding new features that will improve the quality of the tool and address users’ needs in terms of access to information or new ways of working. If you would like to be informed on recent developments, you are invited to sign up to the UPOV PRISMA news feed.

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such as crop production advice to achieve the best harvest.

The use of illegal seeds can ruin the reputation and economic prospects of an entire agricultural region or a key national commodity. It further undermines continuing investment by breeders and seed producers to develop, produce and deliver better quality seeds.

Moreover, these practices are commonly connected with criminal activities, such as tax evasion, fraud, corruption and even labour exploitation, all of which have a negative impact on society.

ISF calls on all stakeholders in the seed value chain, from plant breeders to seed producers, processors, traders and distributors, to operate in line with the applicable laws to deliver legal seed products to farmers so they can be confident in the integrity of the formal seed industry.

ISF expects governments to establish and maintain strong legal protection for seed and plant products through appropriate laws and regulations and to enforce them effectively against those who engage in illegal seed practices.

ISF is convinced it is critical that all parties commit to these conditions to ensure:

• supply of the highest quality of seed, • significant and guaranteed benefits for

farmers, • a vibrant local and regional seed industry

to promote agricultural productivity and sustainability, and

• local, national, regional, and global food security.

A position paper prepared by the International Seed Federation (ISF)

Seed is the most important input in crop production. Reliable, quality seeds are vital to agriculture and the food supply chain. High-quality seeds enable farmers to boost crop productivity, improve livelihoods, and feed a growing population.

In recent years, there has been an increase in illegal seed practices, including counterfeit seeds, fake seeds, fraudulent labelling, IP infringements, regulatory offences, trademark infringements and thefts of proprietary material. In some countries during recent growing seasons, more than 50% of crop seed sold to farmers was illegal or counterfeit1.

Illegal seed practices compromise the quality of seed sold when, for example:

• grain harvested from hybrids is misrepresented and sold as genuine hybrid seed for sowing

• seed packages are labelled with false variety names

• minimum seed quality standards, like varietal purity or germination percentage, are not met

• the percentage of seeds from weeds and invasive species exceeds legal standards

Those who undertake illegal seed practices are misleading and exploiting farmers. They place farmers’ livelihoods and families at risk and decrease the overall capacity of sustainable food production. Continued sales of illegal seeds threaten farmers’ confidence in the seed sector. In such cases, farmers may not receive important supporting benefits available from seed producers and suppliers,

Illegal seed practices: a threat to farmers’ livelihoods, food security and sustainable agriculture

ISF and its members will increase engagement with plant breeders, seed producers, processors, traders and distributors to counter illegal seed practices.

ISF and its members will strengthen advocacy with all relevant stakeholders, including government ministries, agencies, judicial systems and international organizations, to improve legal systems and enforcement conditions, capacity and capabilities.

1 World Bank. 2017. Enabling the Business of Agriculture 2017. Washington, D.C: World Bank. doi:10.1596/978-1-4648-1021-3.

The International Seed Federation (ISF, www.worldseed.org) is a non-governmental, non-profit making organisation. ISF has represented its members' interests since 1924 and, with more than 50 national associations representing 7,500 seed companies from 75 countries around the world, it is widely regarded as the voice of the global seed industry.

Antonio VillarroelChairman of ISF Working Group on Illegal Seed Practices and Secretary-General of

ANOVE (Spanish Plant Breeders Association)

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The European IPR Helpdesk Helpline answers your questions concerning intellectual property (IP) within three working days. You get practical, and free-of-charge, first-line support directly from our IP experts.

If you are curious about the type of IP queries that the Helpline has recently been dealing with, these are shown in this illustration.

If you would like to talk to one of the IP experts of our Helpline, please dial +352 - 25 22 33 – 333

www.iprhelpdesk.eu/helpline

Your IPR Queries Matter to Us: Ask the Helpline

FREQUENTLY ASKED QUESTIONS

IP RIGHTS IN GENERAL:

Our company produces and bottles extra virgin olive oil in Greece, under our brand name. We are interested in registering it at international level. Please let us know how we could do it.

In order to protect your brand from competitors, you should aim to register it as a trade mark.

The main function of a trade mark is to identify a particular trade origin in connection with specific goods and/or services. In other words, a trade mark protects a sign which serves in business to distinguish your product from those of other undertakings.

Trade marks are territorial titles and their geographic scope of protection is limited and depends on the country(s) or region of registration. Therefore, trade mark protection is limited to the country(s) or region (EU) for which the registration is obtained. Hence, you should first decide where exactly you would like to protect your sign.

You can seek trade mark protection at national, international and/or European level – depending on the characteristics of the sign and the planned commercial strategy of your company (e.g. intended markets of distribution of a product; territory on which your products are going to be offered, territory of planned future trade expansion).

A sign can be registered as: • a EU Trade Mark (EUTM) for the entire

European Union territory by filing one single application at the EUIPO,

• a national title, applied for at the IP offices of the respective countries of interest,

• an international registration at the World Intellectual Property Organization (WIPO) which allows you to apply in one process for a bundle of national and/or regional registrations.

Each of the aforementioned ways has its pros and cons – the right choice will depend on several different factors.

The main formal registration requirements for trade marks are similar worldwide. At EU level, these requirements are even harmonised.

Trade mark protection might be granted to signs which are, for instance, distinctive (i.e. capable of distinguishing your products from those of other companies), non-generic and non-descriptive. They should also be in line with EU regulations regarding Protected Geographical Indications, be compatible with public policy and/or principles generally accepted in terms of morality, and must not deceive consumers, for instance, as to the nature, geographical origin or quality of the goods or services. Furthermore, right holders of prior marks which are identical or similar to your sign might challenge your application/registration, provided their rights cover the same territory and are registered for identical or related goods and/or services.

In terms of national applications, the aforementioned registrability criteria will be assessed only for the national territory of your choice (e.g. existence of a similar trade mark in France will by no means affect the application process running in Greece). For information on national applications please visit the websites of the national IP offices of interest.

EU SMEs involved in transnational activities IP in EU-funded projects

Please provide us with a clear

guidance on how to manage IP-related

issues in ERDF projects.

I'd like to know what IP-related

precautions have to be taken into

account when commercializing open

APIs?

Is it correct that costs related to IP

protection at EU level are eligible

within the H2020 framework? What

about international IP protection?

Someone registered our EU trade

mark in China. We want to regain our

brand there. Is it possible? If so, how?

I know how to produce an innovative

artificial oil. I would like to get this

idea protected. Please, guide me how.

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The European IPR Helpdesk N°31, October - December 2018

FREQUENTLY ASKED QUESTIONS

As regards a EUTM application, such criteria will have to be assessed at EU level. Therefore, for your EUTM application to be rejected, it suffices that in one EU Member State a similar or identical mark was already registered in relation to the same or similar products creating a likelihood of confusion for the consumers of that Member State. This might be problematic, which is why many brand owners choose the national or international route (not designating the European Union) instead. More information about EUTMs is available here.

Regarding the international route, the situation gets more complicated. Before filing an international application, the applicant needs to have an existing national trade mark (or trade mark application) in the IP office of one of the territories of the Madrid System (the basic mark). The European Union as such forms part of the Madrid System – this means that you can base your international registration on the basis of an EU trademark application/registration. The application must contain a reproduction of the trade mark applied for, which must be identical to the applicant’s basic mark, the designation of the territories in which the applicant wishes the trade mark to be registered and with a clear indication of the goods and services that the trade mark intends to cover. Although the application has an international character, the registration in each designated state is governed by national laws. Therefore, an international application may be successful in some designated territories and refused in others where the trade mark applied for does not comply with the registration requirements applicable in those territories. More information on the international filings can be found here. Please note that if you choose the international route, you should base your

international registration on the ‘strongest’ national TM application/registration. ‘Strong’ means that it cannot be easily challenged by other trade mark owners. This is due to the fact that, if your basic mark is successfully challenged within the first 5 years of existence, all other national/EU registrations based on that trade mark will automatically cease to exist too.

The decision on whether to apply for trade mark protection, and if so, whether to file the application at national, European or international level should be based on your business strategy and for that it is highly recommended to seek a professional assessment from a specialised trade mark attorney. This person will be able to assess whether your sign is available and would meet the requirements for registration in the territory of your interest. Such a preliminary check is indeed crucial before deciding to apply for trade mark protection. This may save you time, effort and money. If your application is refused, the official trade mark application fees would be due and no fee that has become due will be refunded.

EU-FUNDED PROJECT:

I am a postdoctoral researcher and I am currently writing a proposal for the MSCA-IF call (standard European Fellowship). I would like to add some illustrative figures in my proposal. For that, I have my own created figures, but I would also like to include some pictures that I found on the web.

I understand that since my proposal is just an internal document and will not be published, I am not infringing any copyright issues. Yet I am not 100% sure whether that is allowed or not since I cannot find information on this issue. Could you provide me with some information on that matter?

Please be aware that you may not use copyrighted pictures owned by third parties without their consent in your project proposal, as this would actually constitute copyright infringement. While it is true that project proposals are not published and that the evaluation process is confidential, the use of copyrighted material without the consent of its owner in this context would nevertheless be copyright infringement. Indeed, using material in a grant proposal process, albeit confidential, is not considered a personal, non-commercial or academic use of the material which would be protected from liability for copyright infringement (for your interest, you may find an exhaustive list of permitted exceptions and limitations to copyright in the European Union in Article 5.2 and 5.3 of the 2001 Copyright Directive).

You mentioned that you have found these illustrative figures on the web. If you have doubts, you should check the copyright status of these pictures. This can sometimes be done by consulting the terms of use or legal notice of the website on which you have found the picture. Some may be in the public domain in which case you may use them freely, or made available by their owner for unrestricted use, meaning you may use them freely as well provided that you comply with possible terms of use (e.g. crediting the copyright owner when you use the material). Please keep in mind that much of the original material that is available online is protected by copyright regardless of whether a copyright notice is attached to it (if not, it generally means that the picture belongs to the website owner).

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The European IPR Helpdesk N°31, October - December 2018

The European IPR Helpdesk on tour: Take a look at a selection of our recent events

In the last three months the European IPR Helpdesk Team participated in a number of IP events all over Europe, and provided several IP workshops building capacities in IP management among SMEs and researchers.

IMPACT AcceleratorParis/France

4 September 2018

IP forBusiness Athens/Greece

20 September 2018

Ambassador MeetingBrussels/Belgium4 October 2018

Meet us at these upcoming conferences• 23-25 October 2018: Vienna, Austria

EEN Annual Event • 29-31 October 2018: Vienna, Austria

Industrial Technologies • 30 October 2018: Vienna, Austria

Quantum Flagship Kick-Off Meeting • 09 November 2018: Dublin, Ireland

The Developing Efficient Markets for Patented Technologies round Table by EPO

• 16 November 2018: Luxemburg, Luxemburg Open Science Forum

• 04-06 December 2018: Vienna, Austria ICT 2018

• 06 December 2018: Frankfurt am Main, Germany German Platform Nano Bio Medicine

• 12 December 2018: Brussels, Belgium Communication, Dissemination and Exploitation in H2020

Upcoming IP training events• 09 November 2018: Brussels, Belgium

Societal Challenge Info Day 2017 • 11 November 2018: Berlin, Germany

IP in H2020, special focus on Consortium Agreements in cooperation with the National Contact Point Legal and Finance Germany

• 14 November 2018: Brussels, Belgium IPR issues in cultural heritage projects

• 23 November 2018: Brussels, Belgium IP Management in H2020 with a special focus on MSCA

• 26 November 2018: Pamplona, Spain IP Management in H2020 with a special focus on the Data Management Plan

• 27 November 2018: Warsaw, Poland IP Management in H2020

• 29-30 November 2018: Prague, Czech Republic IP Management in H2020

For further information, please have a look at our online event calendar.

• 29 November 2018: Sofia, Bulgaria SOFIA! IPforBusiness Training

• 06 December 2018: Salzburg, Austria Communication, Dissemination and Exploitation in H2020

Upcoming webinars• 31 October 2018: Technology Transfer • 07 November 2018: Geographical

Indications• 14 November 2018: Freedom to Operate

in H2020• 21 November 2018: IP Management in

H2020 • 28 November 2018: Effective IP &

Outreach Strategies• 12 December 2018: Impact and Innovation

in H2020• 19 December 2018: Maximize the impact

of H2020 project results

IP for Business

Porto/Portugal

9 October 2018

IP forBusiness Amsterdam/Netherlands27 September 2018

EU Open for BusinessStockholm/Sweden

10 October 2018

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The European IPR Helpdesk N°31, October - December 2018

The European IPR Helpdesk

The European Commission provides a wide range of support services for small and medium-sized enterprises (SMEs), but many entrepreneurs are unaware of the help they could be receiving. This is why the Commission launched its EU Open4Business campaign back in 2015. Each year since then, the campaign has targeted SME intermediaries and business multipliers in different countries to inform local businesses about various EU services they can get, and the financial support available under the EU programmes.

Organised by the European Commission and EASME in close cooperation with the Enterprise Europe Network, this year’s campaign attracted more than 200 participants in Latvia, Romania, Finland, Croatia and Sweden.

The programme included access to finance and advice services offered at the EU and national level such as EU regional funds, national funding opportunities, Enterprise Europe Network, SOLVIT, and the Erasmus for Young Entrepreneurs programme.

The European IPR Helpdesk has also been participating in this campaign in order to increase its service outreach all over Europe.

After last year’s success and with the support of our Ambassadors, we joined this year’s tour by enriching our session with local SME case studies in each country showing the importance of IP exploitation and use of the European IPR Helpdesk services.

EU Services at Your Doorstep – again! Open4Business 2018 Campaign

30 May 2018Riga, Latvia

06 June 2018Bucharest, Romania

26 September 2018Zagreb, Croatia

09 October 2018Stockholm, Sweden

13 June 2018Helsinki, Finland

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The European IPR Helpdesk N°31, October - December 2018

How about doing a final recap of this Bulletin issue by answering this true-or-false test?

1. In general, a trade mark that corresponds to the name of the product shall be protected for that product. True / False

2. Plant varieties can easily fall under the scope of patents, leading to uncertainty concerning the freedom to operate and reduced availability of plant genetic material for further breeding. True / False

3. The loss of resources and natural capital in a given geographical area does not represent a problem for the production of GIs. True / False

4. Anyone rightfully holding the variety constituents has the right and duty to use the generic name of the variety. True / False

5. Plants or animals produced by a technical process which modifies their genetic characteristics are excluded from patentability. True / False

6. Compulsory licensing is an exception to the general rule under IP law by which the IP owner has the exclusive right to decide whether to license out certain activities that require its consent. True / False

7. The obligation to use the variety denomination ends after the expiration of the IP right on the variety. True / False

8. UPOV PRISMA cannot act as the national online application system for national Offices that have not yet developed an online application platform. True / False

9. The use of illegal seeds can ruin the reputation and economic prospects of an entire agricultural region or a key national commodity. True / False

10. CRIPR CAS9 is an example of a classic breeding technique for obtaining new plants. True / False

AGRIBUSINESS QUIZ

PATENT QUIZ

Precision agriculture

Site-specific fertilisation is one objective in precision agriculture. Imagine a sensor attached to a tractor cab measuring and analysing the light reflected by the crop, calculating the nitrogen demand and adjusting the rate of application of the fertiliser accordingly.

Try finding patents covering such technology using ESPACENET.

Fancy a Little Quiz?

As you know in every issue we include a quiz to help you develop your patent searching skills using Espacenet. Why don’t you try using Espacenet today?

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The European IPR Helpdesk N°31, October - December 2018

Step one: To find similar patents, identify the most pertinent aspects of the invention – common technical features that may be found in related patents – and for each aspect, define a comprehensive set of synonyms. To perform the search, the following concepts – groups of synonyms covering the different aspects of the invention – can be defined:

1. pill, medic*, drug* 2. sens*, chip*, tag*3. communic*, transmit*, send*4. monitor*, detect*5. acid*, dissolv*, stomach*

The combination drug* monitor* stomach* signal* yields a preliminary list containing one relevant patent document:

KR20140100677 (A) - System for monitoring drug compliance of oral feeding medicine using personal radio frequency identification tag and method thereof

Step two: Use the classification assigned to relevant documents to refine and complete the search.

This patent has two classification symbols assigned that can be used to pursue the search: G06K (broadly covering tags) and A61J (broadly covering specific pills and their container). Combining both classification symbols with the additional keyword signal* yields this list of documents where you can retrieve the following relevant records:

SOLUTION PREVIOUS PATENT QUIZ

EP1885343 (A2) - ORAL DRUG COMPLIANCE MONITORING USING RADIO FREQUENCY IDENTIFICATION TAGS

US2015313507 (A1) - SYSTEM TO MONITOR THE INGESTION OF MEDICINES

Checking some cited patents for one of those records, you will retrieve some additional relevant documents like:

US2005131281 (A1) - Method and apparatus for verification of ingestion

This search can be pursued combining classification symbols and keywords. It cannot be considered as exhaustive but indicates that the concept has been patented.

Did you take your medicine?Many patients with chronic diseases do not take medicines as prescribed, possibly limiting the effectiveness of those medicines. This can lead to disease relapse and recurrence.

Imagine tablets containing a sensor communicating with a monitoring system. When it comes into contact with fluids in the stomach, the sensor is activated and communicates this to the monitoring system.

Using ESPACENET, try finding the patent that covers this invention.

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The European IPR Helpdesk N°31, October - December 2018

1. No less than 21 provisions of the Agreement on the Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement) are dedicated to the enforcement of IPRs.

2. The Enforcement Database (EDB) is a secure Database designed for customs and police to find the IPR, products and contact information uploaded by rights holders including product details, authentication signs, images, logistics, etc., which help enforcers to detect counterfeits.

3. Leading trade fairs are also entitled to issue so-called Exhibition Priority Certificates, certifying that a product has been exhibited at a trade fair.

4. When seeking to declare the invalidity of a trade mark on the basis of bad faith, the burden of proof regarding the existence of bad faith lies with the person that requests the invalidity.

5. To ensure proximity to users, the new Unified Patent Court in the first instance comprises not only a central division – with its seat in Paris and sections in London and in Munich – but also some 15 local and regional divisions set up in the Member States.

6. Since 1977, Aktion Plagiarius e.V. grants its anti-prize “Plagiarius” to manufacturers and distributors of the most flagrant plagiarisms and counterfeits.

SOLUTION TO INFRINGEMENT AND ENFORCEMENT QUIZ

You can now test the lessons learned with this new Bulletin thanks to the following quiz. Find the missing word in the following sentences:

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The European IPR Helpdesk N°31, October - December 2018

The European IPR Helpdesk project receives funding from the European Union’s Horizon 2020 research and innovation programme under Grant Agreement No 641474. It is managed by the European Commission’s Executive Agency for Small and Medium-sized Enterprises (EASME), with policy guidance provided by the European Commission’s Internal Market, Industry, Entrepreneurship and SMEs Directorate-General. Even though this Bulletin has been developed with the financial support of the EU, its content is not and shall not be considered as the official position of the EASME or the European Commission.

Neither EASME nor the European Commission nor any person acting on behalf of EASME or of the European Commission is responsible for the use which might be made of this content. Although the European IPR Helpdesk endeavours to deliver a high level service, no guarantee can be given on the correctness or completeness of the content of this Bulletin and the European IPR Helpdesk consortium members are not responsible and may not be held accountable for any use which might be made of this content.

The support provided by the European IPR Helpdesk should not be considered as of a legal or advisory nature.

DISCLAIMER / LEGAL NOTICE

EDITORIAL BOARDThe following members have actively participated to the shaping of the current Bulletin.External membersMr Thomas Bereuter European Patent Office (EPO)Ms Claire CastelEuropean Union Intellectual Property Office (EUIPO)Mr Andrew CzajkowskiWorld Intellectual Property Organization (WIPO)Ms Valérie Marie d‘Avigneau European CommissionMs Pascale Foujols Executive Agency for Small and Medium-sized Enterprises (EASME)European IPR HelpdeskMs Alejandra AlujaMr Cyril DuboisMr Onur EmülMs Claire FentschMs Inès Garlantezec Mr Nicolas Gutierrez DouënelMs Léa MontesseMs Katrin NeisiusMr Jakub RamockiMs Ulrike WaltsgottMs Stephanie WeberMs Nina Weiler

Elena BertolottoAltius, BrusselsSzonja CsörgõEuropean Seed Association (ESA)Jean-Luc GalEuropean CommissionPhilippe de JongAltius, BrusselsPhilipp von KapffEUIPO Boards of AppealFrancesco MattinaCommunity Plant Variety Office (CPVO) Marco MusumeciUnited Nations Interregional Crime and Justice Research Institute (UNICRI)Antonio VillarroelInternational Seeds Federation (ISF)Massimo Vittori Organization for an International Geographical Indications Network (oriGIn)Dr Juan Antonio Vives-Vallés University of the Balearic Islands

GUEST AUTHORS

GLOSSARYGenetically modified organism (GMO) means an organism, with the exception of human beings, in which the genetic material has been altered in a way that does not occur naturally by mating and/or natural recombination.

New breeding techniques (NBT) is a term used to describe a very diverse range of techniques, some of which are substantially different from established transgenic approaches in their way of introducing traits to an organism.

Should you have any ideas, comments or suggestions related to topics you would like us to cover in future Bulletin issues, please get in touch with us:

European IPR Helpdesk Phone: +352 25 22 33 - 333 (Helpline)c/o infeurope S.A. Fax: +352 25 22 33 - 334 (Helpline)62, rue Charles Martel Email: service@iprhelpdesk.euL-2134, Luxembourg www.iprhelpdesk.eu

Or find us on Twitter or LinkedIn: https://twitter.com/IPRHelpdeskhttp://www.linkedin.com/in/european-ipr-helpdesk

GET IN TOUCH

© European Union (2018)

SUBSCRIPTION

The Bulletin is published three-monthly by the European IPR Helpdesk and it is distributed free of charge.

All issues of the Bulletin are available at www.iprhelpdesk.eu/library/bulletins.