Assessing Novelty of a Plant Variety Patented Abroad

UPOV Convention, Arts. 11 and 12; Legislative Decree No. 30 of 10 February 2005, Arts. 3, 4, 102, 103 and 112; Presidential Decree No. 974 of 12 August 1975, Arts. 1 and 3 – Fruitgrowing Equipment & Service S.r.l. v. Novello & C. S.r.l., Ortofrutta Vitale S.r.l. and Murabito Giuseppe S.r.l.

Headnotes by the Editorial Office

1. In contrast to inventions, the novelty of plant varieties does not have to be assessed in an absolute sense and with reference to the state of the art.

2. The novelty requirement for plant varieties is not lost as a result of mere disclosure, but as a result of the performance of acts of marketing and commercialisation of the material during specific time periods preceding the filing of the patent application.

3. Therefore, the fact that a new plant variety has been subject to trials or submitted for entry in an official register cannot be invoked against the breeder or his successor in title for the purposes of denying patent protection.

Supreme Court of Cassation, Civil Division, Section I (Corte Suprema di Cassazione, Sez. I Civ.), judgment of 29 August 2023 – 25439/2023

Facts and previous instances

1. Fruitgrowing Equipment & Services S.r.l., licensee for the Italian territory of the patent for new plant variety No. 1021 NV, obtained from the University of California for the grape variety called ‘Red Globe’, sued Novello & C. S.r.l., Ortofrutta Vitale S.r.l. and Murabito Giuseppe S.r.l. in order to prohibit them from producing, holding and selling grapes belonging to the above-mentioned variety on the ground that they were not authorised by the licensee or its successors in title, and claimed damage compensation.

The defendants appeared in court and objected that: (i) the plaintiff lacked standing due to the fact that the patent had expired; (ii) the patent was invalid due to the fact that its subject matter was identical to that of a patent previously registered in the US and the one-year time limit for claiming the so-called union priority right had not been respected; and (iii) there was no patent infringement.

1.1 In its judgment of 7 June 2016, the Court of Catania partially upheld the claims, finding that the patent had been infringed and ordering the cessation of the infringement, but rejecting the claim for damages.

2. The appeal, brought by the losing parties, was dismissed by the Court of Appeal of Catania on 17 May 2021.

Whereas the original licence, issued on 14 June 1994 and expiring on 31 December 2003, contained a clause permitting its ten-year extension in the absence of the manifestation of a will to the contrary, the court confirmed the legal standing of the plaintiff, deeming admissible, for evidentiary purposes, the filing of a copy of an e-mail dated 12 February 2013 […] in which the Executive Director of UC Davis Innovation Access, on behalf of the licensor¹ The Regents of the University of California, informed Fruitgrowing’s legal representative of the extension of the aforesaid licence, and instead deeming the production of another document dated 1 January 2014, called the ‘Fifth amendment,’ to be late, since it occurred only at the subsequent hearing, and was not accompanied by a motion for remittitur, for which the requirements did not even exist.

Then, the court specified that the patent application in Italy, concerning a plant variety already patented in the United States, had been filed after the expiry of the annual term provided for by Art. 3, para. 1 of Presidential Decree of 12 August 1975, No. 974; however, it excluded that the expiry of this time limit entailed the nullity of the patent for lack of novelty, observing that, while for industrial inventions this requirement must be assessed by taking into account the state of the art, for plant varieties it is relevant, pursuant to Art. 1 of the aforementioned Decree, the absence of marketing acts in Italy or, in the preceding four years, in any other state. It therefore ruled out that the mere filing of a previous application by the breeder in another state, in the absence of marketing acts, could exclude novelty. It also considered inadmissible, as proposed only within the last written pleading of the defence, the ground of appeal against the judgment of first instance on distinctness and rejected the claim of nullity of the patent for lack of distinctness.

Lastly, it found a patent infringement, as the web pages, on which Murabito and Vitale described themselves as producers/sellers of the grape variety ‘Red Globe’ and Novello as an entity marketing the same, were attributable to the defendants. In fact, pursuant to Art. 107, para. 2 of Legislative Decree No. 30 of 10 February 2005, the burden of proof lay with the defendants, who had not fulfilled it.

3. Novello, Vitale and Murabito appealed against that judgment on the basis of five grounds through a written pleading. Fruitgrowing filed a counter-appeal, also through a pleading.

Reasons for the judgment

1. First of all, the inadmissibility of the appeal, put forward by Fruitgrowing because of the conclusion of a settlement agreement with Murabito Giuseppe, which took place during the second instance proceedings but was not followed by a waiver of the right of appeal by the latter, must be denied: as a result of that agreement, […] filed together with the defence pleading, Murabito allegedly acknowledged the validity of the patent owned by the University of California and of the licence granted by the latter to Fruitgrowing, as well as the infringement of the exclusive rights of the licensee, with subsequent loss of interest in the appeal.

The filing of that agreement – which does not affect the admissibility of the appeal brought by Novello and Ortofrutta Vitale, who did not take part in it – cannot, however, be considered admissible here, since it relates to a fact which, since it occurred at a time prior to the delivery of the judgment under appeal, should have been raised in the second instance proceedings. Moreover, in these proceedings – as Fruitgrowing itself acknowledges – Murabito not only did not waive its right to appeal against the first instance judgment, but also insisted on its defence.

It is true that, as repeatedly affirmed by this Court, Art. 372 of the Italian Civil Procedure Code, insofar as it permits the filing of new documents in the cassation proceedings (provided that they concern the admissibility of the appeal), refers to any document that has an impact on the admissibility of the appeal, including those aimed at highlighting the appellant’s acquiescence to the contested judgment prior to the appeal, or the cessation of the dispute due to facts that suppressed the interest in the appeal, provided that they are acknowledged and admitted by all the litigants (see Cass. Sec. II 26 February 2016, No. 3934; Cass. 5 August 2008, No. 21122; Cass. Labour Sec. 23 June 2009, No. 14657). However, this principle does not apply when, as in the present case, the filing of the document should have taken place during the second instance proceedings, since it regards facts occurring prior to their conclusion, and it also presupposes that the party, at the end of the proceedings, did not insist on the appeal and submitted the same conclusions of the opposing party (see Cass. Labour Sec. 7 December 2017, No. 29439; Cass. Sec. I 20 September 2013, No. 21596; Cass. Sec. II 28 August 2002, No. 12607).

2. As regards the first ground of appeal, the appellants complain of breach and/or misapplication of Arts. 81, 115, 116, 183, para. 6 and 184 of the Italian Civil Procedure Code, arguing that, in finding admissible the filing of the e-mail dated 12 February 2013, the court of appeal did not consider that it had not been filed with the pleading referred to in Art. 183, para. 6, No. 2 of the Italian Civil Procedure Code, but with that referred to in para. 3 of the same Article, and therefore at a procedural stage when only the indication of evidence contrary to the last pleading of the counterparty is permitted.

2.1. This ground is baseless.

[…] it appears that the contested document, certifying the effectiveness of the licence granted to Fruitgrowing and, therefore, the latter’s legal standing, was filed in a timely manner, because it was attached not only to the pleading submitted pursuant to Art. 183, para. 6, No. 3 of the Italian Civil Procedure Code, devoted exclusively to the indication of contrary evidence, but also to the pleading filed pursuant to No. 2 of the same provision, devoted precisely to the indication of evidence and relevant documents.

In acknowledging the proper filing of the aforementioned document, the court of appeal also added that the original licence agreement had been filed together with the writ of summons. Such agreement was entered into on 14 June 1994 and was supposed to expire on 31 December 2003, and according to the (unchallenged) interpretation of the court of first instance, it expressly provided that, in the absence of a will to the contrary, the licence was to be understood as extended for a further ten years, with the result that, at the filing of the writ of summons in July 2012, the contract was still to be considered effective and the plaintiff was entitled to sue for patent protection.

In that regard, the appellants’ claim that the extension of the licence could not have been implied, since for that purpose a written statement was necessary (as expressly required by Art. XXIX of the Master Agreement, i.e. of the original licence agreement, which stated that in the absence of a written statement the term provided for by Art. XXX, fixed at (…), should apply), is inadmissible. This interpretation of the licence agreement is, in fact, in contrast with that of the first instance judgment, and the failure to appeal on this ground, as duly acknowledged by the court of appeal, definitively precludes the examination of the question.

3. With their second ground of appeal, the appellants allege infringement and misapplication of Arts. 3, 4, 102, 103 and 112 of Legislative Decree No. 30 of 10 February 2005, Arts. 11 and 12 of the UPOV Convention and Arts. 1 and 3 of Presidential Decree No. 974 of 12 August 1975. In particular, they challenge the judgment under appeal for ruling out that the patent was invalid for lack of novelty, on the basis of an incorrect interpretation of the so-called principle of union priority. Whereas such principle is intended to reconcile the interest of the inventor in registering his/her invention in several states with the need to avoid that the protection of the invention lasts indefinitely and thus hinders competition and innovation, the appellants submit that, in making the success of the new application conditional upon the absence of marketing acts after the filing of the first application, the court of appeal introduced a further requirement, not provided for by the aforementioned provisions. They add that the judgment under appeal confused the requirements of Art. 1 of Presidential Decree No. 974 of 12 August 1975, laid down for the phase prior to the submission of the patent application, with those of Art. 3 of the same, laid down for the post-application phase, and failed to take into account the purpose of the time limit laid down in Art. 3, compliance with which makes it possible to ‘save’ an application which, in the absence of the priority claim, would have to be regarded as lacking novelty because of the existence of another application in another jurisdiction.

3.1. This ground is baseless.

The judgment under appeal is correct – although it is noted that the Italian patent application, concerning a plant variety (red berry grape called ‘Red Globe’) which had been the subject of a previous patent in the United States, was filed after the expiry of the time limit laid down by Art. 3 of Presidential Decree No. 974 of 1974 – insofar as it confirmed the first instance decision. The latter had excluded the nullity of the patent on the basis of the special regime laid down by the aforesaid Presidential Decree for plant varieties, which differed from the general rules for industrial inventions. The court of first instance correctly upheld that the mere disclosure of the invention resulting from the granting of the patent in the United States, insofar as it was not combined with concrete acts of marketing and commercialisation, was incapable of excluding its novelty, and therefore of precluding the granting of the patent in Italy.

Pursuant to Art. 1 of Presidential Decree No. 974 of 1975, applicable ratione temporis to this case (since it concerns a patent for a new plant variety issued before the entry into force of Leg. Decree No. 30 of 2005), the grant of a patent is subject, in addition to the requirements of uniformity, stability and distinctness, to the condition that, prior to the filing of the patent application, the plant variety had not been subject to marketing and commercial acts in Italy, nor, for more than four years, in any other state, with the consent of the breeder (i.e. the person who created, discovered or developed the variety) or his successor in title. These rules, therefore, differ from those dictated for industrial inventions in the sense that, for the purposes of granting a patent for plant variety, the requirement of novelty is not lost as a result of mere disclosure (i.e. the accessibility of the invention to an indefinite number of persons who are in the position to learn its essential and characteristic elements, so that they can reproduce it), but as a result of the performance of acts of marketing and commercialisation of the material for multiplying the variety. This difference in regulation essentially depends on the peculiarity of the subject matter of the patent, whose level of creativity and inventiveness is not easily verifiable by comparison with all existing plant species and can only be appreciated by the breeder after a certain number of multiplicative cycles, which, by exposing the invention to the possible knowledge of third parties, would make it difficult, if not impossible, to grant patent protection: it is for this reason that, as provided for in the above-mentioned Art. 1, the fact that a new plant variety has been subject to trials or submitted for entry in an official register cannot be invoked against the breeder or his successor in title for the purposes of denying patent protection.

The rules dictated by Art. 3 – regulating the hypothesis in which the breeder or his successor in title, having filed a first application in a state of the Paris Union, wants to obtain protection in Italy as well – need to be interpreted in the light of this peculiar regime: this provision indeed states that the applicant may, upon the filing of the new patent application or within two months thereafter, claim the priority right of an application previously filed in another state, provided, however, that the filing of the new application and the declaration of priority are made in Italy within the peremptory term of twelve months from the filing of the first application. This provision, similarly to that of Art. 4 of Leg. Decree No. 30 of 2005 concerning patents for industrial inventions, essentially meets the need to avoid patenting in Italy being prevented by the grant of a previous patent (or the filing of the relevant application) abroad, in favour of the same inventor, whose existence would necessarily entail the absence of novelty of the invention. The recognition of priority, in fact, entails the backdating of the assessment of novelty and inventiveness of the second filing to the date of the first, provided that the latter concerns the same species and was made by the same breeder or his successor in title. In this way, the destructive effects of the novelty and inventiveness of the second filing, which may be caused by the first one or by any disclosure occurring between the two filings, are ‘neutralised’.

The annual term established for the exercise of the priority right with reference to the application for a patent for plant varieties is expressly defined as ‘peremptory’ by Art. 3 of Presidential Decree No. 974 of 1975, and failure to observe it prevents the applicant from linking the new application to the original one, thus excluding any possibility of backdating the novelty assessment to the time of the first application, and thus imposing the novelty assessment at the date of the application in Italy, without the patent granted abroad being of any importance. Unlike, however, what happens with patents for industrial inventions, this does not prevent the patent from being granted in Italy, since novelty does not have to be assessed in an absolute sense and with reference to the state of the art, but on the basis of the criteria established by Art. 1 of the same Presidential Decree, i.e. with reference to the execution of marketing acts in Italy or, in the preceding four years, in any other state. Thus, the patent can still be granted if it is not proven that such acts have taken place.

With reference to patents for new plant varieties, we cannot apply the principle repeated many times by this Court with regard to patents for industrial inventions, laid down by Art. 16 of Royal Decree No. 1127 of 29 June 1939 and invoked by the appellants. According to such principle, Art. 16, which establishes that industrial inventions, even if not disclosed, cannot be patented if a valid patent has already been issued following an earlier application, implies that the granting of a patent, whether Italian or foreign, is a ground for preventing the patenting of the same invention, even against the same patent owner, with the exception of the case where the inventor, belonging to one of the member states of the Paris Union, has duly exercised the priority right with reference to an invention in the process of being patented or in the meantime patented abroad. When, on the contrary, such priority right has not been exercised or has been wrongly exercised, the patenting of the invention abroad prevents the granting of a new patent in Italy or, if the latter has already been granted, leads to its nullity (see Cass. United Chambers 19 October 1966, No. 2427; Cass. Sec. I 14 July 1976, No. 2701).

4. With the third ground of appeal, the applicants allege infringement and/or misapplication of Arts. 112, 342 and 346 of the Italian Civil Procedure Code, Arts. 3, 4, 102, 104 and 112 of Legislative Decree No. 30 of 2005, Arts. 11 and 12 of the UPOV Convention and Arts. 1 and 3 of Presidential Decree No. 974 of 1975. They allege that the judgment under appeal failed to rule on the invalidity of the patent for lack of distinctness, because it held that the objection raised against the first instance judgment was inadmissible due to tardiness, without considering that it had been raised in the appeal’s first pleading.

4.1. This ground is baseless.

The requirement of distinctness had in fact been subject to an accurate assessment by the first instance court, which had excluded its presence on the basis of specific considerations, distinct from those concerning the lack of commercialisation and the applicability of the priority right, and essentially pertaining to the identity of the subject matter of the patent application filed in Italy and that of the patent previously granted in the United States.

That finding, as correctly observed by the court of appeal, was not specifically challenged by the appellants, who […] are not able to show now that they have punctually re-proposed this ground in the appeal, by means of precise criticism of the – albeit summary – arguments of the court of first instance. On the contrary, they merely refer to a few pages of the appeal pleading (two of which do not appear to be relevant), […] mentioning only incidentally the requirement of distinctness and dealing mainly with that of novelty.

Pursuant to Art. 342 of the Italian Civil Procedure Code, as reformed by Art. 54 of Law Decree No. 83 of 22 June 2012 (converted with amendments into Law No. 134 of 7 August 2012), the appeal must instead contain, under penalty of inadmissibility, a clear identification of the issues and contested points of the appealed judgment and, together with them, the relevant grievances; while such does not require the use of special formulas or the drafting of an alternative possible decision, it presupposes that the appellant argues against the reasons given by the court of first instance (see Cass. United Chambers 13 December 2022, No. 36481; Cass. 16 November 2017, No. 27199; Cass. Sec. VI 30 May 2018, No. 13535). Failure to comply with this duty of specification entails the inadmissibility of the appeal and the subsequent res judicata on the contested point; it thus implies a limitation on the appellate court’s ability to examine factual issues, which certainly cannot be remedied by supplementing and improving the appellant’s reasoning during the proceedings or even, as in the present case, through the last written pleading, even if the point can be raised ex officio by the judge (see Cass. United Chambers 29 January 2000, No. 16; Cass. Sec. II 5 April 2022, No. 10930; Cass. Sec. I 27 September 2016, No. 18932).

5. With the fourth ground of appeal, the appellants allege infringement and/or misapplication of Arts. 115 and 116 of the Italian Civil Procedure Code, observing that the court of appeal uncritically based its decision on the printouts of the web pages submitted by Fruitgrowing, which were considered attributable to them without taking into account the disavowal made by them and the uncertainty that existed as to the origin of the same.

5.1. This ground is inadmissible.

Whereas the printing of web pages does not constitute a ‘private deed’ under Italian law, whose disallowance prevents the judge from considering it […], but rather a mechanical reproduction of documents or images stored on the web, whose conformity to the original, if contested, may be ascertained by any means of proof, including presumptions (see Cass. Sec. V 18 January 2022, No. 1324; Cass. 8 June 2018, No. 14950; Cass. Sec. III 20 August 2015, No. 16998), this Court observes that, in referring to the content of the appellants’ websites to ascertain their production and offer for sale of grapes of the variety patented by the counterparty, the court of appeal carefully examined the objections against these printouts, highlighting the referability of these pages to the internet websites of the same companies, and therefore considering them a valid proof of infringement.

Such appreciation – configurable as a judgment of fact, reserved to the judge of the merits and reviewable by the Court of Cassation for failure to examine a fact that is controversial and decisive for the judgment, pursuant to Art. 360, para. 1, No. 5 of the Italian Civil Procedure Code, or for omitted reasoning pursuant to Art. 132, para. 2, No. 4 and Art. 118 of the Implementing Provisions of the Italian Civil Procedure Code – is not correctly challenged by the appellants, who merely insist on their objections, denouncing a violation of Art. 115 of the Italian Civil Procedure Code, without considering that this can only occur in the hypothetical situation, not occurring in the present case, in which the judge has used as basis for the decision evidence not introduced by the parties, but ordered on his/her own initiative outside the cases in which the law grants him/her officio powers (see Cass. United Chambers 30 September 2020, No. 20867; Cass. Sec. VI 23 October 2018, No. 26769; Cass. 31 August 2020, No. 18092).

6. Lastly, the fifth ground of appeal, in which the appellants allege infringement and/or misapplication of Art. 91 of the Italian Civil Procedure Code, does not contain any real challenge to the appealed judgment, as it claims the misapplication of the default criterion for the payment of the costs of the proceedings, and thus requests the re-examination of the application of such criterion on the basis of the mere assertion of the wrongfulness of the appealed decision, the correctness of which, however, confirms the application of said criterion as carried out by the court of appeal.

7. This appeal must therefore be dismissed, with the result that the appellants must pay the costs of the proceedings. […]

Translated from the Italian by Eleonora Visentin, Turin, Italy.

Footnotes