On Thursday, January 25, 2024, the U.S. Plant Variety Protection Office (U.S. PVPO) announced that the Plant Breeders’ Rights (PBR) Offices of Canada and Japan are now accepting Distinctness, Uniformity, and Stability (DUS) reports from the United States for at least some seed and vegetative species. PBRs are a country-specific specialized form of intellectual property protection for plants. The TRIPS Agreement requires member countries to provide at least “an effective sui generis system of protection” for plants if plants are nationally excluded from patentability. Although the United States does allow patent protection on plants (including both utility and plant patents), the United States also offers a parallel PBR option administered by the U.S. Department of Agriculture (USDA) through the U.S. PVPO. Many countries, including the United States, Canada, and Japan, administer their national PBR regulations in accordance with the UPOV Convention.

An important part of a PBR application in the Union for the Protection of New Varieties of Plants (UPOV) system is DUS testing, through which each applicant must demonstrate that the variety for which they are applying for protection is distinct, uniform, and stable—e.g., the variety must be different from known varieties, display no more than minor and predictable variation in its characteristics when propagated, and retain its characteristics from generation to generation, respectively. The PBR Office in each country has its own method for determining whether a new variety satisfies the DUS factors, which can include, for example, 1) requiring de novo DUS testing of the new variety in-country, 2) accepting DUS test reports generated from other UPOV member countries, and 3) accepting DUS test results submitted by the applicant based on their own internal DUS testing, or various iterations and combinations of the above. Given that many countries have their own unique and not-fully-overlapping requirements for determining that a new variety satisfies the DUS factors, applicants applying for protection in more than one country frequently face a heavy burden in complying with the various requirements of each country for the same variety. The U.S. PVPO’s practice is to accept DUS test results conducted by applicants themselves, or accept DUS reports from other members of UPOV for all species of asexually reproduced crops and for some species of sexually reproduced crops. (Applicants can check the U.S. PVPO’s DUS acceptance table for the status of particular species from a U.S. perspective, which has not been changed by the new agreements with Canada and Japan.) However, until now, Japan and Canada have not accepted U.S. DUS reports.

This announcement thus eases the burden on applicants applying for protection on the same variety across the United States, Canada, and Japan by making DUS report acceptance mutual for some species between Japan and the United States and between Canada and the United States, rather than one-sided, as it was prior to this announcement, when the United States accepted Canadian and Japanese DUS reports, but the reverse was not true.

Japan

The U.S. PVPO’s announcement specified that, effective immediately, the Japanese PVPO will accept U.S. DUS reports on a case-by-case basis for seed-reproduced and vegetatively reproduced crops.

Canada

Canada’s Plant Breeders’ Rights Office, for its part, is now accepting U.S. DUS reports for most “ornamental or horticultural” varieties (e.g., fruits and vegetables, but excluding potato species), regardless of whether seed-reproduced or vegetatively reproduced. Submission of the U.S. DUS report will fully replace Canadian trial requirements for these varieties.

For potato (Solanum tuberosum) varieties and agricultural seed-reproduced varieties for which Canada requires DUS trial results from two growing cycles in Canada, the new agreement allows applicants to use the U.S. DUS report to fulfill one of the two required cycles’ worth of data. For these varieties, one growing cycle of trials in Canada will still be required.

Actions for Applicants

For applicants with pending or active PVP protection in the United States who are interested in seeking Canadian and/or Japanese protection, the U.S. PVPO recommends contacting the Canadian and/or Japanese PBR Office (contact information for each is available through the links above), respectively, to request acceptance of the applicable U.S. DUS report. After review, the foreign office will contact the U.S. PVPO directly to request the DUS report for applicable varieties.

For applicants with pending or active PVP protection in Canada and/or Japan who are interested in seeking U.S. PVP protection, the U.S. PVPO recommends submitting the DUS report used in Canada and/or Japan to the PVPO as Exhibit D in the U.S. PVP application.

This announcement, which the U.S. PVPO sent by email to its customers, is an encouraging sign of increasing harmonization across UPOV member offices’ practice, which is likely to save significant time, money, and stress for applicants. Indeed, full compliance with the many varying DUS testing requirements for each country is currently one of the most significant hardships in seeking international protection for a new variety. Issues associated with DUS testing coordination, local phytosanitary compliance, plant material import/export regulations, etc., each on a country-by-country basis, can present significant challenges to achieving PBR protection in all countries of interest. Increased cooperation in DUS report sharing among UPOV member countries will therefore likely be welcome news to applicants.

For additional information on plant variety protection in the United States, please see our previous posts regarding deposit requirement for asexually reproduced plants, PVPs on transgenic and gene-edited plants, and the PVP’s expansion to asexually reproduced plants.

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