Blackcurrant, public interest and the first ever compulsory licensing application at the Community Plant Variety Office?

Compulsory licensing has traditionally been perceived as a way, under certain preconditions, to counterbalance the exclusive rights of the IP rightholder. Resorting to a compulsory license in the field of patent law is well-known though it is seldom relied upon.

Less known, and even less used, is the compulsory licensing provisions under the plant variety protection rights system. In particular, Article 29 of the Council Regulation (EC) No 2100/94 of 27 July 1994 on Community plant variety rights (replaced with a new article on May 2004 in order to conform to the changes brought about by the Directive 98/44 of the European Parliament and of the Council of 6 July 1998 on the legal protection of biotechnological inventions) provides for the legal framework concerning the grant of compulsory licenses  of rights of community plant variety protection.

Compulsory licenses are granted by the Community Plant Variety Office (the Office) solely on the ground of public interest considerations. According to the preamble of the Regulation (see above), public interest may include the need to supply the market with material offering specified features or to maintain the incentive for continued breeding of improved varieties.  Public interest could also concern the protection of life or health of humans, animals or plants. Although the provision has not been applied in practice, thus making it difficult to be certain of its precise scope, the choice of the term “public” reveals that, as a general rule, it will take more than the  interests of a certain grower or group of growers in order for a compulsory license to be granted.

Where the supplier himself, or by means of one or several licensees, provides the market with the plant variety in question, the application  for a compulsory license will probably not be successful. In this respect, in order to assess the “relevant market” in a specific case, the Office will be able to resort to the caselaw of the Court of Justice relating to Article 82 of the EC Treaty.

This IPKat as the guardian 
of the blackcurrants!

The first compulsory license application

The first application for a compulsory license under article 29(1) of the Council Regulation was filed on the 16th of March 2017 when the Community Plant Variety Office received an application for a compulsory license (“the application”), concerning the CPVR for the blackcurrant variety “Ben Starav” of the species Ribes nigrum L. (CPVR No 2009/1980) owned by Lucozade Ribena Limited (previously Smith Kline Beecham Limited). The applicant is Pixley Berries (Juice) Limited, a company specialised in the processing of fruit including blackcurrants.

The proceedings so far

Upon receipt of the application, the Office informed the parties of the procedure to follow namely requesting: 

•       The holder to send to the Office, before 2 October 2017,  any written observations in relation to the application for a compulsory license:
•       The parties  to  attempt to reach an amicable settlement on the basis of a contractual license.
•       The parties to inform the Office whether they intend to seek the intervention of the Office with the aim of reaching an amicable settlement on a contractual licence,
•       The parties to the proceedings  inform the Office whether they request an oral hearing in accordance with Article 38(1) of Commission Regulation (EC) No 874/2009 of 17.9.2009.

The parties informed the Office that they would not request the intervention of the Office with the aim of reaching an amicable settlement on a contractual license. In fact, both parties rejected the possibility of an amicable settlement, taking into consideration the repeated earlier attempts of the applicant to reach a voluntary contractual agreement and the repeated negative responses of the titleholder. Based on this, the Office held the oral hearing  on  January10,  2018. All that is now left is to await the decision, expected to be given in late March 2018.

The President of the Community Plant Variety Office, IPKat friend Martin Ekvad,  wrote in response to a query from the  IPKat, 

“compulsory licenses can be granted if there is a public interest. Although some examples of public interest are given in the applicable legislation, it will be up to the Office to set the standards for the assessment of this rather open concept. The decision can be appealed all the way to the Court of Justice. To draft the decision will be an interesting but challenging task, the result of which will most probably be scrutinised by industry and IP scholars.”

IPKat will be awaiting for the decision with great interest!

To be continued!