The CPVO's Schnitzer Gala

Author: Gert Würtenberger (WürtenbergerKunze, Munich)

Case C-534/10 P, Brookfield New Zealand Ltd and Elaris SNC v Community Plant Variety Office and Schniga GmbH, Court of Justice of the European Union, 19 December 2012

Journal of Intellectual Property Law & Practice (2013) doi: 10.1093/jiplp/jpt053, first published online: May 3, 2013

The CJEU confirms wide discretion of the Community Plant Variety Office (CPVO) in technical examination proceedings.

Legal context

New plant breeding results may be granted Community plant variety rights if the variety is distinct, uniform, stable and new. Whether the first three criteria of ‘distinctness’, ‘uniformity’ and ‘stability’ (the so-called DUS requirements) are satisfied is examined by the Community Plant Variety Office (CPVO) by means of a technical examination according to Article 55 of Council Regulation 2100/94 on Community Plant Variety Rights. Once the Office has reached the conclusion that an application fulfils the formal requirements, it will arrange for a technical examination by an Examination Office appointed by the CPVO. Examination Offices are usually either national authorities which examine whether national applications fulfil the requirements for grant of a national plant variety right or other institutions competent to examine whether a new variety fulfils the DUS requirements.

According to Article 55(4) the CPVO shall determine, through general rules or through requests in individual cases, when, where and in what quantities and qualities the material for the technical examination and reference samples are to be submitted. While so-called ‘technical protocols’ for the distinctness, uniformity and stability tests for certain species set up rules for the technical procedure to be followed (in principle, based on general UPOV documents TG/1/3 and the Guidelines related to those species), the request to the Applicant to submit certain material at a certain time is issued separately for each and every application.


Having examined Schniga's application in relation to fulfilment of the formal requirements, the CPVO requested that the applicant submit, within a specific period, to the Bundessortenamt—appointed as the Examination Office in this matter—the plant material required for the technical examination. The request was accompanied by the remark that the applicant was responsible for complying with all phytosanitary and customs requirements applicable to the delivery of the material. The Office did not, however, specify the requirements.

With its acknowledgement of receipt of the plant material, the CPVO informed the applicant that the material was not accompanied by a Phytosanitary Certificate and thus asked the applicant to ensure that this essential document was provided ‘as soon as possible’. Obviously, a specific time limit was not stipulated.

In order to comply with this request, the applicant submitted a so-called ‘European Plant Passport’, issued by the Plant Protection Service of Bolzano, to the Examination Office and advised that the Plant Protection Service had informed the applicant that this document serves as a Phytosanitary Certificate. While the Bundessortenamt informed the applicant a few weeks later that the material had arrived in due time and that it was appropriate for the DUS tests, it simultaneously stated that the Plant Passport provided was insufficient for the purpose of conducting the technical examination to determine whether the substantive conditions for the grant of a Community Plant Variety Right had been met. The Examination Office failed, however, to request a copy of the official certificate confirming that the material submitted was virus-free. In the third test period, that is to say three years later, it transpired that the applicant was unable to provide the requested documentary evidence as, in the interim, the material submitted in 1999 for the purpose of the technical examination was not virus-free. As a reaction to this information, the Bundessortenamt informed the CPVO that it intended to uproot the infected material in order to prevent a possible virus spreading to other plants cultivated in the fields of the Bundessortenamt. The question whether the plants were indeed virus-infected, remained open. In June 2001 the Office then informed the applicant that it had, in consultation with the Bundessortenamt, decided to authorize the submission of new virus-free plant material in order to resume the examination of the application. The Office justified its decision by the fact that its instructions regarding the phytosanitary state of the material had not been sufficiently clear.

DUS tests were continued with new material submitted in 2002, leading to grant of a right for the variety in 2006 and causing the parties Elaris and Brookfield, the licensee and the holder of a plant variety right relating to the apple variety BAIGENT, to lodge with the CPVO objections to the grant of a right to Schniga's variety, under Article 59 of Regulation 2100/94. Apart from the argument that Schniga's variety was not sufficiently distinct from the reference variety BAIGENT, they objected to the possibility given to the Applicant to submit new virus-free plant material. According to the intervening parties, the CPVO should have refused the initial application due to failure to submit material appropriate to performing the technical examination. While the Office rejected the objections and granted a Community Plant Variety Right, finding that it was sufficiently distinct from the reference variety BAIGENT and also dismissing the objections against submission of further plant material, the Board of Appeal annulled the Office's decision upon appeal by the opponents, according to Articles 67 to 72 of the Regulation. The Board of Appeal was of the opinion that Article 61(1)(b) of the Regulation did not empower the CPVO to authorize an applicant to submit new material, as in this case it had complied with the requests in an individual case.

The applicant contested this decision by an application for the annulment of the decision with the General Court, which concluded that it was in the scope of the discretion of the Office, conferred on it by Article 55(4) of Regulation 2100/94, to allow the applicant to submit new material. In cases in which the Office has not been sufficiently precise regarding the conditions to be met by an applicant, the Office may consider whether the lack of precision in its instructions to the applicant may be remedied in view of the principle of sound administration and in light of the need to ensure the proper conduct and effectiveness of proceedings. Moreover, the General Court stated that such discretion enables the CPVO to satisfy itself that its request in individual cases is clear, as this would enable other applicants to be unambiguously aware of their rights and obligations.


The intervening parties filed an appeal before the Court of Justice of the European Union on two grounds of appeal:
* infringement by the General Court of Article 73(2) of Regulation 2100/94 and

* infringement of Article 55(4) 2100/94, read in conjunction with Article 61 (1)(b) of that Regulation.
In relation to the first ground of appeal, the appellants claimed that, by reappraising the facts, the General Court exceeded its jurisdiction in reviewing the legality of the Board of Appeal's decision. Consequently, the judgment under appeal was based on a new assessment of the significance and scope of certain correspondence of the CPVO. The CJEU did not share this opinion. Referring to established case law, the court emphasized that the General Court has a similar jurisdiction as regards the review of the legality of decisions issued by the CPVO or its Boards of Appeal. Within the limits specified in Article 63 of the Regulation, the General Court may examine whether the pertinent Board of Appeal made a correct legal characterization of the facts of the dispute, or whether its appraisal of the facts placed before it was flawed. This requires that the facts are also considered.

As far as the second ground of appeal is concerned, the CJEU confirmed its finding in Case C-38/09 Schräder v CPVO that the CPVO has broad discretion in performing its functions. Thus, the CPVO may, if it considers it necessary, take account of facts and evidence which are submitted or produced beyond the time limits. In this context, by way of analogy the court referred to case C-29/05 P OHIM v Kaul as regards the competence of the OHIM.

The CJEU also emphasized that, since the CPVO is subject to the principle of sound administration, it must examine all the relevant factors of a case with care and impartiality and gather all the factual and legal information necessary to exercise its discretion. In addition, the Office must ensure the proper conduct and efficacy of proceedings which it sets in motion. Article 55(4) lets the Office determine, through general rules or through requests in individual cases, the requirements regarding the quality and quantity of plant material as well the locality to which the plant material required for the technical examination as well as reference samples are to be submitted. The court regarded the request for submission of material as a request in an individual case, allowing the Office to decide whether the applicant may be granted another opportunity to submit fresh testing material. Such a decision must be made by observing the principles mentioned above.

Practical significance

This decision is a further cornerstone in the determination of the CPVO's scope of discretion. Having confirmed a wide scope of discretion in Case C-38/09 P Schäder v CPVO, it now had an opportunity to consider the possibilities for the Office to allow the applicant to submit new plant material in exceptional cases. According to Article 56(4) of the Regulation, technical examination shall begin no later than the date on which a technical examination would have commenced on the basis of an application for a national property right filed, on the date on which the application sent by the Office was received by the Examination Office. The Office maintains an annually updated list of dates for the submission of sample material to be used for the assessment of candidate varieties (Article 55(4)). In principle, non-compliance with these deadlines leads to refusal of the application. The reason for this policy is that the breeder should be forced to apply for plant variety protection only for those varieties which are finalized, excluding the application for unfinished varieties to the disadvantage of competing breeders. By setting strict deadlines, the applicant should be forced to ensure that the variety fulfils—on the date of application—the so-called DUS requirements, including the possibility to establish a priority date for a breeding result which, at the time of filing the application, is not yet particularly stable or uniform.

On the other hand, the applicant must have certainty about the Office's expectations regarding the requirements for quantity and quality of the material submitted for testing purposes. If the applicant submits material which does not meet the requirements necessary to ensure proper technical examination, because the Office has not been sufficiently precise in its request for submission of the requisite testing material, the variety owner must be granted a second chance to submit material, allowing the Office to perform proper examination. In contrast, the variety owner must know as soon as possible whether the variety applied-for does not yet fulfil the DUS requirements, so that it is possible for him to withdraw the application before marketing or otherwise disposing of plant material of the variety destroying novelty. The application as such does not destroy its novelty by the uncontrolled disposing of material of the variety. If this has not yet happened, a fresh application may be filed if, in the meantime, further development of the variety has ensured that all new protection requirements can be fulfilled.

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