About the Author

Alice Smart is a trainee patent attorney with a wide range of technical experience working in large pharmaceutical companies and smaller start-up firms enabling her to work on patent applications from diverse technologies.

Plant varieties post Brexit: how to protect your variety in the UK

Brexit has changed the way intellectual property rights are sought and protected, in many ways. Pre-Brexit, anyone seeking to protect plant varieties in the UK and/or EU member states made a single application to the Community Plant Variety Office (CPVO); however, as of 1 January 2021, this is no longer possible.

We have received many questions from applicants and holders of plant variety rights around the impact of Brexit on:

• Rights that existed pre-Brexit
• Applications pending at the time of the Brexit transition
• The process and procedure for obtaining rights in the UK and EU for new plant varieties after 1 January 2021

The following is a summary of answers to the most common questions relative to managing and obtaining plant variety rights in the UK and EU post-Brexit.

Impact of Brexit on existing Community Plant Variety Rights (CPVRs)

Applications for CPVRs granted on or before 31 December 2020 will automatically have corresponding UK plant breeder’s rights (PBR) from 1 January 2021, as these applications have been mirrored as UK rights. The UK PBR will have the same lifespan as the corresponding CPVR.

The Animal and Plant Health Agency (APHA) have recorded all corresponding UK rights here. The UK will continue to use the EU grant number for any correspondence.

No further action or payment of further fees are required, for now. Currently there are no annual fees for PBRs in the UK. However, this is under review and charges may apply from 2022. The APHA requires rights holders to provide a UK-based agent or address for service before 31 December 2023.

The CPVO will require an EU address for service or details of an EU-based procedural representative for all CPVRs. As of the date of this article (8 April 2021), the CPVO already should have contacted rights holders requesting this information.

Community Plant Variety Applications filed pre-Brexit and pending as of 1 January 2021

To keep the filing/priority date for Community Plant Variety Applications pending as of 31 December 2020, applicants must make a UK PBR application by 30 June 2021. Applicants will retain the original CPVO application filing date and the UK will automatically takeover the EU distinctness, uniformity and stability (DUS) report. Unlike the granted rights, there is no automatic transfer to a UK PBR application.

If an application is not made by 30 June 2021, the applicant will not be able to claim priority from a pending CPVO application. Applications must then make a new, non-priority claiming UK PBR application, but this could mean that the variety in question lacks novelty. To fulfil novelty requirements, the variety must not have been sold or used for commercial use in the UK more than one year before application, or four years before application anywhere else (six years for trees or vines). In addition, the EU DUS test may not be taken over and therefore an applicant may have to pay for UK DUS testing.

The process to make a UK PBR application claiming priority from a pending CPVO application is as follows:

• Non-UK applicants must provide a UK address for service, or UK based procedural representative, using this form.
• Apply using UPOV PRISMA by creating or using an existing WIPO user account. An Authorization Letter then needs to be created, to apply either as a Breeder or Agent. Model letters are available on UPOV PRISMA. The letter must be uploaded into UPOV PRISMA and once accepted, the system can be used.
• The online application form is similar to the CPVO application form; many of the fields can be copied. However, the technical questionnaire is an integral part of the UPOV PRISMA application form (unlike the CPVO application) and may contain different fields for variety characteristics.
• Claim priority from the pending CPVO application – even if it isn’t within twelve months of the original CPVO filing date. This is essential to retain the filing date of the CPVO application.
• The following attachments are required:Photographs of the variety, compressed into a single .zip file if there are multiple images. For non-UK applicants, designation of a UK-based procedural representative via the requisite form. Assignment of rights forms for the breeders (Only the specific UK form is acceptable; you cannot re-use the CPVO assignment forms and only a single document can be uploaded. UK assignment of rights form can be found here.)
• A fee of CHF 90 must be paid on submission of the application
• The APHA will then issue an invoice for the application fee of GBP 450, as of 8 April 2021 (In most cases, the invoice is issued one month after the application has been received)
• The UK will take over the EU DUS report and DUS takeover fees will apply (As of 8 April, this is CHF 350)

UK PBR applications filed after 1 January 2021

To obtain protection for a new plant variety in the UK and Europe from 1 January 2021, two separate applications will need to be made – one to the CPVO, and one to the APHA using the UPOV PRISMA system as described above. A UK agent is required where applicants are not UK-based. To apply for EU rights, the CPVO will require an address for service or procedural representative based in the EU.

The UK will carry out its own DUS tests unless it doesn’t have testing capacity; in that case, the UK will either purchase the DUS report issued by another authority, or will entrust another examination office to carry out the DUS tests. To instruct a test centre to carry out DUS testing, the test centre will charge a DUS fee. The purchase price of a DUS report is currently CHF 350.

In conclusion

Lots of information is available on the UK Government website regarding plant varieties.

Most importantly, where CPVO applications are pending and UK protection is sought, applicants must apply to the APHA before 30 June 2021 to retain the original CPVO filing date.

If you need a UK agent, guidance with the application process or help with existing or new CPVO rights please get in touch:

simon.bradbury@appleyardlees.com

alice.smart@appleyardlees.com

Please note that the above information is not intended to be comprehensive and does not constitute legal advice. If you require specific advice, we are happy to discuss your particular circumstances.