A dispute over plant variety rights between Brazilian companies
Fibria Celulose and Eldorado Brasil Celulose has caught the
attention of IP lawyers, as Alberto Guerra Neto and Rodrigo
Ferreira of the Inter-American Association of Intellectual Property
(ASIPI) explain.
The Brazilian legal system is facing an unprecedented intellectual
property dispute between two of the largest cellulose companies in
Brazil. For the first time since Brazil became a member of the
International Union for the Protection of New Varieties of Plants
(UPOV), and then adopted the Plant Variety Protection (PVP) Act, we
are seeing a lawsuit covering the enforcement and potential
infringement of rights related to a protected variety of
eucalyptus.
Fibria Celulose is a Brazilian company, and owner of plant variety
protection rights covering more than 26 protected eucalyptus
varieties in Brazil. The rights have been granted by (and/or
applied for at) the National Plant Varieties Protection Service, in
accordance with Law No. 9.456/97, part of the PVP Act.
A possible violation of rights of Fibria's eucalyptus variety
VT02, for which a PVP certificate was issued on July 25, 2007,
motivated the company to file a precautionary measure (judicial
seizure of samples for laboratory testing), before the Court of
Três Lagoas, against Eldorado Brasil Celulose, a direct
competitor in the cellulose market.
According to Fibria, Eldorado was using clones of its VT02 plant
variety in its eucalyptus plantation fields.
Brazilian PVP law grants a term of protection of 15 years (or 18
years for trees such as eucalypts) from the issuance of the
Provisional Certificate of Protection within Brazilian territory.
The protection covers the vegetative propagating material of the
whole plant and prevents third parties from producing it for
commercial purposes or offering it for sale or marketing, without
the owner's authorisation.
Also, those who sell, offer for sale, reproduce, import, export,
pack or store the plants for commercial gain, or provide
promotional material, without authorisation, are obliged to
compensate the owner.
According to Law No. 9.456/97, the infringer will have to pay a
fine equivalent to 20% of the commercial value of the seized
material and the infringement will be considered a criminal
violation of the plant breeder's rights, without prejudice to
other criminal penalties.
In order to legally obtain substantive proof to file the main
lawsuit against Eldorado, Fibria Celulose filed a precautionary
measure and requested that the judge issue a preliminary injunction
to collect samples from Eldorado's trees. The samples would be
used for a legal analysis conducted by an expert to be indicated by
the judge.
Important features
Many appeals have been filed in order to discuss important
features of this case. The appeals asked for clarification on
matters including:
Which laboratory will be responsible for the DNA test, since the
only one capable to do it was responsible for a private test and a
report requested by Fibria. The report was shown as evidence to
obtain the injunction when the court action was filed;
The content of such report, since the plaintiff asked for a DNA
report and the counterpart also asked for a morphologic report;
and
The content of the DNA and morphological tests in the same
report/conclusion. After favourable decisions for both sides in all
those appeals, the High Court has decided to execute only the DNA
test by the previous designated lab (a respected and capable one,
although it had been hired before by Fibria).
In this regard, the judge designated an expert, whose technical
report pointed out that samples collected from Eldoraldo's
eucalyptus fields do not differ from VT02. Based on DNA analysis
using microsatellite molecular markers, the report concluded that
five out of six of Eldorado's samples shared 99.99999981% of
the same features as Fibria's VT02.
Although the Brazilian PVP law establishes that plant varieties
should be identified based on morphological aspects of the plant
(leaves, fruits, flowers, etc), to comply with minimal requirements
of distinctiveness, homogeneity and stability, the current practice
and guidelines of UPOV accept and even promote the use of modern
molecular technologies that may provide high quality results within
a less laborious short term, in comparison to traditional methods
that may depend on the plant's stage of growth and other
conditions.
Having the technical report available, the judge shall issue a
decision on this request for a precautionary measure. This is just
the starting point of what it is considered a leading case on IP
matters related to plant breeders' rights in Brazil.
Not only the parties directly involved in this action are
interested—the whole Brazilian IP community is engrossed in
this case and is looking forward to following future
developments.
Originally published in WIPR
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