Over the past 5 years, on average, 50 plant variety applications have been filed with the Patent Office. Nevertheless, the cases of infringement discussed in the past few years have been very limited. It is worth stating that the registration and the infringement complaints in Peru are faculty of the Patent Office, which, nevertheless, must support its decisions on the technical opinion of the Ministry of Agriculture.
In this sense, on January 25, 2022, two resolutions were issued, one in connection with Case File 1496-2021 and the other in connection with Case File 1526-2021, in which the complaints filed for lack of means of proof were declared groundless, so a comparative analysis was made between the protected variety and the allegedly infringer varieties. Nevertheless, the latest resolution in which a comparative analysis is noticed dates from 2007, wherein the complaint was declared well-grounded. In that case, the Ministry of Agriculture, through the INIA (National Institute of Agrarian Innovation), took samples of the seeds of the allegedly infringer variety and subjected them to an assay (germination and cultivation) and determined that said variety presented the same expression level of the protected plant variety Bella Flor APV No. 1. In other words, a morphologic description analysis was made, based on the assays performed by the Ministry of Agriculture.
On March 01, 2022, the Patent Office approved the guidelines for performing assays or analysis of samples to determine the infringement of a breeder’s right.
The novelty of these guidelines is that they include a new assessment criterion which is not legally established, neither has it been included in the case law. Thus, this new assessment criterion establishes that in the case of an infringement complaint an analysis based on DNA techniques can be performed, either: (i) using the DNA profile of the variety, which is like the fingerprint or bar code of the protected variety; or (ii) using a DNA fragment (genetic marker), which is associated with a determined position within the genome of the variety.
According to the mentioned guidelines, this analysis based on DNA techniques must be performed by an authorized laboratory and subjected to a method of analysis or of validated assay. Moreover, the guidelines indicate that the analyses based on DNA techniques using a DNA fragment (genetic marker) are complementary to the morphological description analysis, that is, they cannot be used on exclusive basis in an infringement complaint proceeding.
We believe this new assessment criterion constitutes an important progress, since it will allow determining with more objectivity when the Authority is really faced with the infringement of a breeder’s right.