Tomer Biran, a legal consultant specialising in varietal protection, explores the IP pitfalls of trials and the commercialisation of new fresh produce varieties
More breeders are running bigger, more public variety trials, and that is good for the market. It also makes a trial a moment worth being deliberate about – because two parties sit on either side of it and what protects one can expose the other.
Plenty of things shape what a varietal trial is worth. This time I want to discuss the one where I often see things go wrong: triggering novelty deadlines for new varieties. Novelty is one of the most important factors to consider on the path towards registering and protecting your proprietary variety, and it is the easiest to lose by accident.
A plant variety right is only open to a variety that is still new. Novelty can be lost once propagating or harvested material is sold or otherwise disposed of with the breeder’s consent to exploit the variety, beyond a short grace period.
It is the sale or disposal that starts the clock, not the filing. Under the UPOV 1991 Act and the EU regulation, that period runs to one year where the disposal happened in the territory where protection is later sought. It is four years, or six for trees and vines, elsewhere. Cross it and the variety is no longer new there, and the right is gone for good.
What keeps a trial on the right side of that line is strict control: material goes out purely for evaluation, the breeder keeps the sole right to dispose of it, and the crop never reaches the market under the variety name. A solid written contract usually secures that.
In our experience it is only half the job, because a trial runs in the hands of agronomists, packers and sales staff who never read it. And novelty is as easily lost to the wrong invoice or day-to-day actions as to a wrong clause.
The same narrow scope that guards novelty can leave the other side exposed. A grower or licensee spends real money – and growing seasons – proving the variety, while the trial gives them no commercial rights in it. Too often, the terms appear only once the variety has performed, when the leverage has gone.
It does not have to be that way. Keeping the trial a clean evaluation and settling the commercial future are not in conflict. The cleanest arrangement gives the trialling party an option to commercialise if the trial succeeds. The heads of terms of the licence, the royalty basis, territory, exclusivity and term are all agreed in principle up front and kept separate from the trial. Agreeing that option does not, in itself, trigger novelty.
Treated as a formality – a plant in the ground and a handshake – a trial can cost both sides dearly. Treated as what it is – a step on the road to commercialisation, rather than the destination – it becomes the moment the whole relationship is shaped.
This is not legal or financial advice. Every situation is different, so please check your own facts, and take advice on them before you act.
Tomer Biran is managing partner at Greenstone and former group general counsel at BerryWorld. He advises fresh produce businesses on the commercial and legal strategy of varietal development, protection and growth. Read the full analysis here.
