Evidence from DNA fingerprinting tests can be used to determine disputes involving plant varieties, according to a recent decision of the Delhi High Court. In its recent judgment dated July 1, 2019 in Pioneer Overseas Corporation v. Chairperson, Protection Of Plant Varieties And Farmers Rights And Ors, MANU/DE/2102/2019, the Delhi High Court was examining allegations of misappropriation of germ plasm protected under The Protection of Plant Varieties and Farmers’ Rights Act, 2001 (‘the Act’).
Pioneer Overseas Corporation (‘Pioneer’) had applied to register a maize variety, 30V92 in August 2007, while Kaveri Seeds Limited (‘Kaveri’) had applied to register of a maize variety, KMH50 in January 2009. Pioneer first opposed Kaveri’s Application by way of an opposition under the Act. Further, Pioneer also filed an application under Section 24(5) of the Act claiming, among other things, that the two varieties were identical, and Kaveri had misappropriated the germ plasm of Pioneer’s variety. Additionally, Pioneer also filed an application for a special test (DNA Test) to determine the genetic profile of the two varieties in order to support its claim. But this application for a DNA test was rejected, and the Registrar held that the two varieties complied with the Distinctiveness, Uniform and Stable (‘DUS’) criteria laid down for plant varieties under the Act. As per the Registrar, the DNA test was only applicable in the cases where varieties failed to satisfy the DUS criteria. Pioneer lost the opposition, and Kaveri’s application for registration was directed to be registered.
Pioneer challenged these decisions of the Registrar further before the High Court in September 2014. It also challenged a letter dated June 24, 2013 by the Registrar to the Government of India stating that both varieties were distinct and were eligible for registration under the Act.
- According to Pioneer, procedural reasons prevented Kaveri’s application from proceeding, as it had abandoned under Section 21(4) of the Act. The provision requires that Kaveri should have filed a counter-claim to the opposition within two months of receiving notice of the opposition but did not do so. Pioneer argued that this was tantamount to abandonment.
- Pioneer also argued that the Registrar had failed to consider scientific evidence like pedigree information, DNA fingerprinting and research records.
- Pioneer also alleged that Kaveri’s variety was not examined for DUS criteria before acceptance for registration.
- Pioneer claimed that under Section 18 of the Act, Kaveri had failed to provide the requisite information to the Registrar about the parental lines and veracity of genetic material of its variety.
- Finally, Pioneer claimed that the results of the DUS tests were not conclusive of the two varieties being different. It said that the registrar had failed to compare the characteristics of two varieties, especially distinctiveness.
- Kaveri said that procedural lapses did not prevent the Registrar from considering the opposition on merits.
- According to Kaveri, the Registry did not have to conduct a DUS test before accepting an application, and a DUS test for a variety could be conducted at any stage of the application.
- Once DUS criteria were met by Kaveri’s variety, there was no requirement to compare it with Pioneer’s variety. In any event, according to Kaveri, the DUS test reports clearly established that the two varieties were distinct from each other.
- Kaveri also claimed that Pioneer’s request for a special test (DNA test) was not acceptable. It claimed that under Rule 20 of the 2003 Rules accompanying the Act, DNA tests could only be conducted when DUS tests failed to establish distinctiveness. It also said that a request for a DNA test could only be made by an applicant and not any third party.
The key finding of interest to prospective applicants of plant varieties is that Rule 29 does not preclude a third party opposing registration of a variety from requesting and relying on results of the special test (DNA test). In fact, the court noted that in order to determine distinctiveness between two varieties, a test that generated data related to the genetic makeup of a variety would be helpful. Effectively, the court held that DNA tests could be beneficial in cases involving disputes related to plant varieties.
The court also said that even if a particular variety met the DUS criteria, the application for that variety could still be challenged by an opposition. The implication of the court’s decision appears to be that DUS tests are not binding and conclusive, and do not preclude oppositions.
The court also addressed the various procedural questions that had come up during the case. It said that once an applicant failed to file counter statement to an opposition, the application would be deemed to be rejected.
The court also held that the scheme of the Act is unequivocal. The Registrar must examine an application before accepting it for registration. Once the application has been accepted for registration and no opposition is filed, the law says that the Registrar “shall” register the application. The use of the word “shall”, according to the court, makes the provision mandatory, giving no discretion to the Registrar to reject the application. An applicant must satisfy the Registrar that the DUS test has been complied with before the Application is accepted for registration of a variety.
The Court said that the test laid down under Section 19 (1) of the Act includes DUS test as well as evaluation of whether the seeds conform to standards notified under the Seeds Act, 1966. It noted that under Rule 29(2) of the 2003 Rules, once the application for registration of a variety is found in order, the Registrar shall direct the applicant to deposit the requisite fee for conducting the DUS tests within two months.
The decision is likely to change how disputes involving ownership of intellectual property rights in a variety are adjudicated. The acceptance of DNA profiling tests as a means of verifying varieties is a breakthrough in plant variety protection law and practice in India. As a result, the plant variety registry will also have to equip itself for such tests becoming part of the registration and opposition processes that it hears. Stakeholders in this space are likely to benefit overall, as DNA profiling tests can lead to effective adjudication.