“Consider Ye The Seed” – Breeder’s Exemption and Plant-related Patents in a Genoa IP Court Decision

By interim order of 24 April 2025 – perhaps the first, and certainly among the earliest Italian precedents on the matter – the Genoa IP Court issued a particularly noteworthy decision concerning the application of the so-called breeder’s exemption to plant-related patents.

The Legal Background
In 2019, the Italian legislator introduced paragraph 1 a-bis) into Article 68 of the Italian Industrial Property Code (herein IPC), thereby extending the breeder’s exemption – already established in the context of registered plant varieties – to plant-related patents.

The provision states: “The exclusive rights conferred by a patent shall not extend, whatever the subject matter of the invention may be: (…) to acts done for experimental purposes relating to the subject matter of the patented invention, or to the use of biological material for the purpose of breeding, or discovering and developing other plant varieties.”

This reform stems from the implementation of Article 27(c) of the Agreement on a Unified Patent Court into Italian law. The first part of the provision refers to the experimental or research exception, which already existed in the Italian legal system; the second part refers to the actual breeder’s exemption.

The Dispute
In December 2019, a company active in the production and sale of beetroot seeds received, during an industry meeting, several packages of seeds pertaining to two new varieties developed by a competitor. These seeds were characterised by the presence of a gene conferring high resistance to Cercospora. The company then initiated its own research on the seeds.

In November 2024, however, the company received a cease-and-desist letter from the competitor, who, in the meantime, had filed two European patent applications (also validated in Italy) concerning those same varieties of beetroot seeds. In the letter, the competitor accused the company of having illegitimately acquired the seeds and demanded that it refrain from conducting any research, production or commercial activities involving the genetic results incorporated in them.

The company, following receipt of that warning,  filed an ambitious interim petition before the Genoa IP Court, seeking: (i) a summary declaration of the lawfulness of its acquisition of the disputed seeds, (ii) a negative declaratory judgment on the competitor’s claims, and (iii) a corresponding injunction against the competitor from undertaking any obstructive actions against its business activities involving the seeds – including commercial activities.

The Decision
The Genoa Court partially upheld the interim petition, provisionally recognising the claimant’s right to continue using the disputed seeds for research and experimentation purposes under Article 68(1 a-bis) of the IPC, and enjoining the patent holder from obstructing activities carried out for such limited purposes.

The judge found that the periculum in mora (danger of irreparable harm) justifying an urgent injunction consisted in the risk of frustration of the results of the research and experimentation initiated in 2019.

The judge considered that the alleged unlawfulness of the initial acquisition of the biological material was entirely irrelevant to the applicability of the exemption under Article 68 IPC.

In this respect, the judge noted that the limitations on patent rights introduced to allow experimental and research activities are grounded in Articles 9 and 32 of the Italian Constitution and Article 13 of the EU Charter, which relate to freedom of research and the protection of health, as well as in Article 42 of the Italian Constitution, concerning the social function of private property. The interest in promoting free scientific competition and its favourable impact on the material conditions of society, being constitutionally relevant, outweighs the opposing interest in the protection of intellectual property. For this reason, the exemption in question may be invoked “(…) regardless of the possibly unlawful origin of the availability (…) of the material used in the experimentation.”

On the other hand, the judge rejected the claimant’s request for a provisional declaration of its right to carry out commercial activities involving the subject matter of the patent applications, noting that the company had not alleged any imminent and concrete entrepreneurial initiatives requiring protection. Therefore, the danger of irreparable harm (periculum) was lacking. He also incidentally observed that, in any case, the exemption under Article 68 IPC does not apply to commercial uses.

For the same reason, the judge also dismissed the request for a provisional declaration of the lawfulness of the acquisition of the disputed seeds, submitted by the claimant: since the issue had already been deemed irrelevant to research and experimentation activities, it became “procedurally superfluous” in relation to commercial activities, which were not eligible for interim protection due to the lack of periculum.

A Relevant Precedent for the Agricultural Sector
As mentioned, the Genoa order stands among the first significant judicial applications of Article 68(1 a-bis) IPC concerning plant-related patents and constitutes a useful precedent in outlining their limitations.

The most interesting aspects of the decision include:

• The restrictive interpretation of the exemptions set out in the provision, which are deemed not to include commercial activities;

• The finding that issues relating to the lawfulness of the acquisition of the biological material covered by the patent are irrelevant to the applicability of the exemptions.
  
  For seed companies and research centres, the message is that activities – including cultivation – carried out on patented material, provided they are not commercially oriented, fall within the scope of lawfulness even where there are disputes about the origin of the material.
  
  On the other hand, it would have been interesting to read the judge’s decision had he not considered the claim concerning commercial activities to lack periculum. In particular, it would have been useful to understand whether and to what extent – assuming the inapplicability of the exemptions under Article 68 IPC – he would have considered the lawfulness of the initial acquisition of the seeds in question.
  
  It is worth noting that the order discussed here is subject to appeal and, in any case, the outcome of the interim proceeding may be overturned in the ordinary proceedings on the merits.