Италия

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ITAL Y

Standards for the Protection of New Plant Varieties* ----.. --�-- .----.---.

Consolidated Text of Decree No. �74 of August 12, 1 975, as amended by Articles 76 to 78 of Decree No. 338 of June 22, 1979,

and Law No. 620 of October 14, 1985**

Article 1

Patents for in dustrial inventions may be g ranted in respect of new plant varieties capable of agricultural or industrial applicatio n.

Within the meaning of this Decree� a new plant variety, regardless of how it is obtained, is one that meets the following c riteria�

(a) it must be sufficiently homogeneous, having regard to. the particular features of its sexual reproduction or vegetative propagation;

(b) '

it must be s table in its essential characteristics, that is, to say, i t must remain true to its description after repeateo reproduction or propaga­ tion and, where the, breeder has defined a particular cycle of reproduction o r multiplication" a t t h e end of each cycle;

{c} whatever' may be the origin, artificia l or natural, of the varieties from'which it derives, it must be cl early distinguishable by one or more impor­ tant characteristics from any other plant variety whose existence is a matter of common knowledge at the time when protection is applied for. Common knowl­ edge may be established by reference to various factors such a s : CUltivation or marketing alreaCiy in progress, entry in an official register of varieties already made or in the course of beirig made, inclusion in a reference collec­ tion or p recise description in a publication.

At the time of the application for a pat,ent, the p lant variety must not have been, with the ag reement of the breeder or his successor in title, the subject of commercial acts for longer than one year in Italy, or for longer than six years in the case of g rapevine, forest trees, fruit tre es and orna­ mental trees, includ ing, in each case, their rootstocks, or for longer than four'"years in the ca se of the other plants in the territory of any other State.

However, the fact that a new plant variety has been the subject of trial c ultur es, or ,has been entered or submitted for entry in an official register , shall not affect the rig ht of the breeder of such a variety or his successor in title.

* Italian title (o f Dec ree No. 974) � Decreto del Presidente della Repub- ,blica, 12 agosto 1975", No. 974 - Norme per la protezione delle nuove varieta vegetalL

** Consolidated 'I'ext prepared by the Office of the Union f roltl th� texts published in the Gazzetta Ufficiale della Repubb1ica Italfana:

Decree No. 974 of August 12 , 1975; GU of April 26, 1976; Decree No. 338 of June 22, 1979 (Revision of the Natio nal Patent Legisla­ tion Pursuant to the Delegation Given by Law tvo. 260 of May 26, 197 8);, GU of August 7, 1979; Law No . 620 of Cctober 14, 1985 (Ratification' and Implementation of the Act for the Revis i on of the I nternational, Convention of Decembe r 2, 1961, for the �rotection of New Varieties of Plants, as Revised on November 10, 1972, Signed at Geneva on October 2 3, 1978', and Amendment of the Decree of the President of the Republic 1\10. 974 of August 1.2, 1975, Containing the Standards f or the Protection of �ew P lant Varieties ): GD of November 12, 1985.

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:The characteristics which permit :a new -plant variety to be defined and distinguished 11lay be of 'a morphological or physiolqgical nature. "In all cases, the�·must be capable or Frecise description and .recognition.

those��; i�irti!.oit 9�hl�:sp�;:::pt�aa�d ��t�vcir: l�a�s��idw��� ��a���lu.d.ice'- to.�=�=-=. Processes whereby new .-plant varieties are obtained shall no.t .be p ro.tect­

able under the provisions of this De9ree, even ir they .are described in the patent application; however, such processes ma� be -the subject of - separate applications ror a patent fo.r an industrial invention, in accordance with the provisions of ,Royal .Decree No. l127 of J"une29, J.939, p rovided that they are nct essentially of a _biological nature.

Article :2

The prov�s�cns of Articles 2584 to. 2591 of the Civil Code and thcse cf Royal TIecree No.. ll27 of June 29, 1939, as subsequently completed and amended, and of the Rules approved by !lcyal Decree No. 244 of February 5, 1940, as s ubsequently completed and amended, are appl.icab1e to new plant varieties, prcvided that they are not incons,istent with those o.f this .Decree.

Article 3

The breeder o.f a new plant variety o.r his successo.r in title may claim a right of priority, either at the time of filing the application for a patent or within two months thereafter, based on the f irst application filed pre­ viously in another State of the Paris Union for the Protection of New Varieties of Plants for the purpose of obtaining a title of protection for the same vari­ ety. The right of priority may cnly be enforced if the application for a patent and claim in respect of priority are filed in Ita�y within the mandatory period of twelve mo.nths from the date cf filing of the first application.

-The breeder or his successo.r in title who claims the right of priority shall be allowed a period of four years after the e>:pi ration of the period of priority in which to. furnish the additional dccuments and material necessary for the examinaticn p rovided in Article 8 below. Those documents and the material necessary for the examinaticn may be -requested, ho wever, befo.re the expiration of the four-year period and within an adequate perio.d where the application whose pricrity is claimed is rejected or withdrawn. The perio.d cf six mQnths laid down in Article 20 of the Rules apprcved by Ro.yal Decree No.. 244 of February 5, 1940, for the submissio.n cf a copy, certified by the

J. Of the'Law o.n Patents Ior I nventions (Royal Decree No . -1127 cif June 29, 1939, as- last amended by Decree o£ the .President of the 1<epublic No. 3 38 0.r June22, 1979.

Article 14, paraQraph (3), reads as £ollows�

"AdditionallYT the ccntent 6f Italian patent applications, or o:f Eurcpean or international patent aPPlications designating Italy, as riled, o.r which the dates of filing are prior -to the date re:ferred to. in the preceding paragraph and which were published or made available to the public on or after that dater shall be co.nsidered as comprised in the state o.f the art."

Article 15, paragraph (3), reads as follows:

With respect to inventions fcr which prioritY'is claimea under international conventions, the e>:istence of the novelty requirement provided _ ror uridE;-r Article 1-4 must be evaluated with reference to the starting date or the priority."

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competent authority, of the documents which constitute the first filing shall r emain unaffected.l

Article 4

The rights conferr.ed by a patent in respect of a new plant variety shall consist of the exclusive right to produce for sale, to put on the market and to introduce in the territory of the State, propagating or reproductive material of the patented new variety.

Such exclusive right shall extend to the production, the marketing and the introduction in the territory of the State of the products of the patented new variety in cases where its predomina nt use occurs through the sale of plants; parts of plants or f lowers to be used for or namental purposes.

Where the new variety is deri ved f rom another patented variety but can be reproduced. independently f rom that other variety, the provisions of Article 5 of Royal Decree No. 1127 of June 29, 1939, shall not apply . 2

Authoriz ation by the propri�tor of the patent shall be required, however, when the repeated use of the plant variety is necessary for the commercial production of another variety.

However, third parties have the right to produce the patented new plant variety :Eor the purpose of research or ot obtaining hy bridization material. Such production shall, in all cases, be restricted in such a way as to preclude the commercial exploitation of the product, which shall not be distributed for purposes of gain outside the farm where it was produced.

The maximum limits on such production shall be laid down for the vario u s plant families and species b y the Ministry of Agriculture ana Forestry � o n the advice of the Commission referred·to in Article 18 below.

Article 5

The new plant variety being the subject of. a patent shall have the aeno­ mination given to it by the breeder, who shall specify it at the time of filing of the application for a patent.

The denomination must be such as to enable the new variety to which it refers to be identified and may not consist solely of figures,· except where this is established practice for designating varieties. The denomination must meet the following c riteria�

(1) it must not be cont rary to law, public order or morality;

(2) it must be identical to the. denomination already registered as the d�signation of the same variety in one of the States of the Par is Union· ·for the Protection of �ew Varieties of Piants, subject to··the power of the Central Patent Office t o request a trans.lation into Italian of the original denomina­ tion;

1 The third paragraph of that Article reads as follows�

"The patent shall be granted without the mention of priority if the documents specified in the first paragraph of Section 11 above h ave not been submitted in the presc ribed form within six months :from the filing of the a�Flication."

2 That Article reads as :Eollows�

liThe patent for an industrial invention, the working of which involves th_� _�,?rking of inventions protected by prior r still valid r-atents for industrial inventions, may not ·be ·worked or- used without the consent o:t the proprietors of such p rior patents.1I

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(3) it"lIlust not be ..liable to 1lIislead or to cause con.fusion concerning the c haracteristics or value o.f the plant variety or the identity o.f the breeder; in particu1.ar, it must be di"f.ferent £rom every denomination which designates, in any !lIember State o.f the aforementioned International Union, an existing__

.-vari-ei=;y or the same or ·a .close·ly related botanical species�. . _-_.._--

-j;he denomination o.f the patented new plant variety shall be regarded as the generic nam e of that variety and shall be used in order to distinguish it, even after the expiration o£ the prot�ction of that vari"ety.

The denomination or the patented new ?lant variety shall also be entered in the appropriate .regi-ster .•

It shall be proh ibited to use the aforementioned denomination to designate pJ.ant varieties of the same speci es but which dif.fer from the patented varLety.

It shall be permit�ed to associate a trademark, trade name or other similar indication with 1;.he variety denomination, provided that the vari�ty denomination remains easily recognizable. -

Article 6

It shall be proh ibited to the breeder or his successor in title to use, as the denQm"ination of a ne\v plant variety, distinguishing words or signs in respect of which he enjoys the protection, either in the State or in a member State of the Union for the l?rotecti"on of New Varieties of Plants, accorded to trademarks and which serve to distinguish a botanical species that is identical or similar to the new variety; neither may he use, for the the aforementioned purpose, a denomination liable to cause confusion with the said mark.

If the breeder or his successor in title wishes to use, as the denomina­ tion.o.f the new variety to be patented, a trademark such as that described in the pre_ceding paragraph, or a denomination liable to cause confusion with such a mark, he may renounce his right to protection of that m ark. "In that case, his renunciation shall be effective from the date of its entry in the trademark register.

If a denomination coming under the prohibition laid down in the fir st paragraph above is nevertheless registered, the breeder or his sUCcessor in title may not continue to assert his right to the trademark in respect of the new variety or a similar one.

, In cases where the denomination of the new variety specified in the patent application appears to fall under .the pr ohibition laid down in the first para­ graph a bove and it has not yet been registered, the breeder or his successor in title shall be allowed to request to substitute for it another denomination which meets the prescribed requirements� �f he fails to submit a new denomina­ tion wij:-hin six months "f rom the date of the request to that effect, he may not c o nt inue "to assert his right to the corresponding trademark in respect of the new variety a -o r similar one..

Once the new denominc:ttion has been registered for the variety, the breeder or his successor in title may prohibit the use of the previous den9min�tiQn"bY persons obliged to use it before the entry irito force o.f this Decree only after the expiration of a Feriod of one year f rom the date of publication of the registration of the new denomination.

Article"7

The duration of a patent granted under this Decree shall be l5 years from the date of its grant.

The patent shall J.ast for 30 years from the date of its grant in the case of plants with a woody stem such as - grapevine, f ruit trees and their root­ s tocksr forest trees and ornamental trees.

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Subjec t to the provisions o f Artic le 4, third paragraph, of Royal Dec ree No. 1127 of June 29, 1939,1 the effects of the paten t shal l commence. on the date on which the ap p lication, together with its annexes, is made available to the public as provided in Artic l e 9 below.

Artic le 8

The application for a paten t in respect of a new plan t variety shall b e examined t o ascertain�

(a) t hat the application and the documents appen ded thereto are in or der,

(b) that the denomination o f the new plant variety is in conformity with t he p rovisions of this· Dec ree;

( c) t hat· there are no elements liable to impede the grant of a patent within the m eaning of Article 1 above.

The Cent ral Paten t Office shall provide .for the examination in respec t of item (a) above. The examinations .in respec t of items (b) and ( c ) above shal l be within the competence of the Minis t ry of Ag ricul ture and. Forestry , which may, however, dec ide to d ispense with such examination s, wholly or in part, i f such examinations have already been car ried out with sufficien t gu·arant ees in Italy or in another State of the Paris Union for the Protec tion of New Vari­

eties of Plants.

In that case, the ap p licant shal l submit documentary evidence of the examinations made.

Article 9

Applications for pa tents in respec t of new plant varieties shall be filed only in Rome, with the Cent ral Patent Office. They may al so be sent through the post in accordance with A rtic le 2 of the Decree ·of the President of the Republic No� 540 of June 3D, 1972.2 The other documents relating to the said application s may be filed with the Chambers of Commerce, I ndus try and Handi­ c rafts of the capital towns of the p rovinces.

within 60 days after the date of filing of the application for a patent, the. Central Patent Office shall put up a notice to this effec t on its notice­ board, where the notice shall_remain for 30 days.

For the a:t:-plications for patents in respec t· of new plant varieties, the period provided in A rtic le 4 of Royal Dec ree NO. 1127 of June 29, 1939, for making the documentation available to the public shall be 90 days from the

.date of filing of .the application .

Any person may, within the following 60 Clays, aCldress its observations tq the Central Patent Office, in duplicate, in respec t of the Faten tability of the plant v·ariety .

Artic le 10

The Cen tral Patent Office shal l satisfy itself that the aPFlication is in order and, where observations have been p resented to it by third per sons, it shall send the aPFlic a nt a copy thereof, and invite him to submit any counter­ s tatement.

1 That paragraph reads as follows�

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Article 11

The Central Patent Of"fice shall· :forward the documents relating to the application "for a patent t� the lolinistry of Agriculture and Po.re stry, to gether with· the observations, if any, of interested third parties r the applicant r s counter-statem!,!nt and any other rt;:levant information, and request ·the Ministry---:--. ..-.-· :-:::-::::-:-� :.. for an advice as ·to whether the application is admissible. . '

The Minister of Agri culture and Forestry shall, before undertaking the examinations falling within his compe.ten.ce, invite the applicant to pay, within a period of three months, the fee' prescribed under A rticle 22bis b elow and to transmit to it the r.eceip t evidencing payment.

Any unjustified ;failure to· pay within the said period shall entail the application for a patent ·to be considered withdrawn in all respects.

Article 12

On the advice of the lolinistry of Agriculture and Forestry, the Central Patent Office shall either grant the patent or reject the application.

The patent. gra nted under this Decree shall not exempt its p roprietor or any other person using its subject matter f ro m conforming with t'he laws and . regulations governing the production , marketing and use of the subject matter.

The Ministry of Agriculture and· Forestry shall have ' the right, at any t ime, to undertake a technical control .test in order· to establish that the conditi ons set forth in items {al and (bl of the second paragraph of Article 1 are still being complied with.

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Article 13

The patent shall be declared null and void if it is established that the conditions laid down in item (cl of the second paragraph and in the third paragraph of A rticle 1 of this Decree were not effectively complied with at the time the patent was granted.

The patent shall become forfeit if the breeder or his successor in title:

{al fails to provide the Ministry of Agriculture and Forest ry with the reproduc,tive or propagating material capable of producing the new variety with its morphological and physiological characteristics as def.ined when the patent was g:;anted;

(b) within the prescribed perioa and after being requested to do so, does not provide the comp�tent authority with the reproductive or propagating material, the documents and the information deemed necessar y for checking the new variety, or does not allow inspection of the 'measures which have been taken for the maintenance of the variety;

(cl has failed to pay within the prescribed peri od such fees as may be p ayable to keep the patent in force.

In . the. cases referred to in items (a) and (b) above, the pa·tent shall be declared for.feited by the Central Patent Office on t he proposal of the Ministry of Agriculture and Forestry.

A patent may not be oeclared null and void or become forfeit on grounds other than those set out in this A rticle.

Article 14

.The provisions of the Decree of the President of the Republic No. 849 of February 26, 1968, Concerning Compulsory Licenses, as subsequently amended, shall apply to patents in 'respect of new plant varieties insofar as they are compatible with the provisions of this Decree •

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There shall be consioered to be f.ailure to work, suspens�on or reduction in working,. within the meaning of Article 1 of the. aforementioned Decree, if the breeder or his successor in title, either direc.tly or by means of one or more licensees, fails to provide user s on the territory of the State with the reproductive and propagating material of the patented plant variety to an extent that meets the requirements of the country's economy.

Article IS

In acc.ordance with the same provisions of the aforementioned Decree of the President of the Republic No. 849 of February 26, 1968, for reasons of public interest and regar dless of whether or not the patent is being worked, special-­ non-exclusive--compu1s.ory licenses may be issued at any timer against payment of equitable compensation to the proprietor of the patent, for the exploitatio n of. such patented plant varieties a s are suitable for the prodUction of food for hUman or animal consumption, ther apeutic purposes or the manufacture of drugs.

Article 16

The licenses provided in the ·preceding articles shall be is.sued in accor­ dance with the advice of the Ministry of Agriculture and Forestry,. which .shall decide the conditions prescribed for the issuance of licences. The amount a n d terms o f payment of the remuneration, in case of opposition in the sense o f Article 54guater of Royal Decree No. 1127 of June 29, 1939, shall be determined on the basis of Article 50, second paragraph, of the said Decree.l

The decision to issue a license maY impose an obligatJon on the proprietor of the patent to provide the licensee with the necessary reproductive and/or p ropagating material.

Article 17

In order· to undertake the examinations which are necessary for the aOVIces to be given under the provisions of this Decree, the Ministry of Agriculture and Forestry shall be authorized to conduct experiments on national territory and to carry out inspections at productions sites.

For such purposes, the said Ministry shall be entitled to the assistance of agricultural research institutes, university institutes and those institutes set up under international conventions or agreements to which Italy is a party.

Article 18

In order to enable the Ministry of Agriculture and Forestry to give it s · advices in conformity with the pr.ovisions of th is Decree, an Advisory Commis­ sion shall be set up in that Ministry by dec ree of the Minister of Agricultur� and Forestry .

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i Article 54quater; second paragraph, reads as follows� " • • • the proprietor of the patent and any persons holding rights in

the patent On the basis of recorded or registered acts, may oppose the grant of the application or declare not to·· accept the amount and terms of payment of the compensation. Such oPPo$ition must· be accompa·nied by the· reas·ons therefor. P Article 50, second paragraph, reads as follows:

" • • . ethel amount and the terms of payment shall be determined by a Board of Arbitration, consisting .of three member s, one to be ap�ointed by each of the parties and the third by the first two or, in case of disagreement, by the President of the Boar d of Appeals. The Board of Arbitration sha·ll base its award on a f air evaluation. If its award is clearly unfair or wrong or if one of the parties refuses to ap:f.oint its arbitrator, the matter shall be decided by a judge."

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Th� Commission shall consist of�

el} a Chairman, who shall be a S�ction Bead .of the Council of State and be appointed by its .President;

(2) the Dir�ctor Gen eral for Agricultural Prod,uction, Ministry of Agri­ culture and Forest ry;

(3) the Director General of the .Depart ment for the Protection of Agri­ cultural �roduction, Minist ry.of Agriculture and Eorestry;

(4) the Director General of the Department o:f Upland Economy and Forest­ ry, Ministry of Agricultu re and Forest ry;

(5) the Director o:f the Institute in charge o:f the registers of seed product vari eties;

(6) the Director of the Central Patent Of:fice;

(7) an ordinary professor from the :faculty of agriculture. of a Unive r­ sity, who shall be appointed by.the Min ister of Education;

(8} the Director of an agricultural experimental institute, who shall be appointed by the Minister of Agricu�ture and Forestry;

(9) a technical examiner from t�e Central Patent Of fice;

(10) an official o:f the Ministry of Health.

Those members listed in items (2) to ( 6) above may be represented by officials of their respective departments; for those members listed in items (7) to (10), an alternate shall be appointed.

On the decision, w hich must be ju stified, of the Chairman, particular ly qualified expe rts, to a maximum of three , may be called upon to become members of the Commission for the examination of· specific questions.

An official of the M inistry of Agriculture and Forest ry from the category of directors, of a rank not lower than that of Head of Depart ment , shall act as S ecretary of t h e C ominission.

The, Commissions's term of o;ffice shall be three year s, and that ·of its members shall be renewable.

In the event of the Commissions's term of office not being renewed on the date due, the Com mission shal.l cont inue to f unction pending suc h renewal.

. Before expressing ·its advice, t he Com mission may hear the views of the parties concerned or o:f their representatives, who shall in a12 cases be heard if they so request.

Article 19

. Those members .of the Commission who are not government officials shall receiVe, where appropriate, the per diem pa yable to higher of:ficials.

A rticle 20

The expropriation referrea to in Articles 60 � seg. of Royal Decree 1-10. l127 o:f Jun e 29, 1939, shall, in the case of new plant varieties, be carried out in consultation with the Minist ry of Agricu2ture and Forestry.I

1 i.e. in the interest of the military defense o:f the country or for other reasons of p ublic interest�

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Article 21

A copy .of the introductory act of every civil J,ega1 proceeding and appeal to the Commission referred to in Article 7� of Royal Decree No. 1127 of June 29r 1939,1 in connection with patents for new plant varieties shall be communicated to both the Central Patent Office and the Ministry of Agriculture and .Forestry by those pers�ms instituting the proceedings. If this has not been done, the judicial authority or the aforementioned C ommission may, at any s tage in the proceedings and before re.aching a decision, request that such a communication be ��de.

Article 22

The patents for new plant varieties shall be the subject of the same fees and the same time limits for payment as are provided for patents for industrial inventions.

For the application for and grant of a special compulsory license under A rticle 15 above, the same fees shall be due, and at the same dates, as are provided for the ordinary compulsory' licenses 'in item 91 of title VIII of the tariff attached to the Decree 0:13 the President of the Republic :No. 64i of October 26, ·1972, as subsequently' amended.

Article 22bis

For the issuance of the advices and the undertakin g of the technical con­ t rol tests provided by Articles 11 arid 12 above, the compensations .provided by the tariff fixed by Decree of the l1inister of Agriculture and Forestry r after consultation of the competent department of the High Council for Agriculture and Forestry, shall be due in proportion with the cost of the service.

Such compensations shall be served into a special item of the State budget by the applicants for patents for new plant varieties.

Article 23

The costs of implementation of this Decree, estimated at 120 million Lira for 1976, shall be offset·by the income derived from the fees laid down in the preceding Article.

The·Minister for the Treasury shall be authorized, by means of appropriate decreel?, to amend the budget as necessary. .,

Article 24

·The provisions of this Decree shall. apply, from the date of its coming into force, to new p lant varieties of the following genera and species� (1) wheat; (2) barley; (3) rice; . . (4) maize; (5) ·luc"erne; (6) clover; (7) rose; (8) carnation; (9) grapevine and its rootstocks; (10) poplar.

By decre� of the Minister of industry, Commerce and Handicrafts in agree­ ment with the Minister of Agriculture and Forest ry, the fore going. pr.ovJ..S�Ons may be extended · ·graduall y t·o new plant varieties of other genera and species.

Article 25

This Decree shall enter into force 180 days after the date of i ts publica­ t ion in the Official Jour nal of the Italian Republic.

1 i.e. the Board of Appeals.

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The nec:essary technical and administrative measures for implementation o f this Decree shall be provided for b y decree o f the Minister :for Industry, Commerce and H andicrafts, in agreement with the Minister of Agriculture and Forestry and the Minister of Health.

This Decree, f itted with the Seal of the State, shal1. be incl uded in th e Official Collection of laws and Decrees of the Italian Republic. It shall b e the obligation o f each and every person to observe the Decree and t o see that it is observ ed.

Article .15 of Law No. 620 of October 14, 1.985

The compensations referred to in the preceding Article [Art icle 22b�sJ and the procedure .for their collection shall apply to· the applications for patents concerning new plant variet ies filed after the date of entry into force of this raw.

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Within one year from the date referred to in the precedin g par agraph,'. there shall be provided , by Decree of the Minister of Industry, Commerce and Handicrafts,. in agreement with the Minister of Agriculture .and Forestry and the Minister of Health, for the amendment of the Ministerial Decree of October 22, �976, publ ished in the Official Jour nal No. 15 of January 18, 1.977, containing the Imp lement ing Regulations of the Decree of the President of the Republic No. 974 of Au gust 12, 1.975.

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