Plant variety protection: Plant Breeders’ Rights

In Australia, plants can be simultaneously protected under both patent and Plant Breeders' Rights legislation. Davies Collison Cave can assist in developing an appropriate Australian or global strategy to protect plant innovations.

Plant Breeders’ Rights

A Plant Breeders' Right (PBR) is an exclusive right in a registered plant variety provided by the government. It is intended to reward plant breeders for their efforts in breeding new and distinct plant varieties and to encourage further breeding of new and distinct plant varieties.

An internationally recognised right

Plant variety protection has its roots in the International Convention for the Protection of New Varieties of Plants (the ‘UPOV Convention’), to which there are more than sixty member states. UPOV membership facilitates the filing of applications for rights in one member state and use of this application to claim priority for subsequently filed applications in other member states.

IP Australia includes the PBR Office which administers Plant Breeders’ Rights. However, the PBR Office does not take any role in enforcing PBR, which is a civil or criminal matter for the PBR owner.

What a PBR protects

The PBR protects the registered variety, the variety name, dependent varieties (DVs) and essentially derived varieties (EDVs) of the registered variety and in some cases harvested material and products made from the harvested material of the variety.

All genera and species of plant are protectable, including fungi and algae.

Dependent varieties and essentially derived varieties

Upon registration, narrow extended rights are also given over certain derivatives:

• Dependent variety (DV) is a variety which is not clearly distinguishable from the registered variety. Alternatively, a dependent variety is one which is not capable of being reproduced without repeated use of the first variety.
• An essentially derived variety (EDV) may be declared by the PBR Office where a first breeder claims another breeder has developed an albeit separately registrable variety (i.e., it is distinct, uniform and stable) which is derived from the first breeder's registered variety and which has no important (as distinct from cosmetic) distinguishing features relative to the first breeder's variety. To defeat a claim for EDV, the second breeder must show that his variety has an important distinguishing feature such as any feature which affects the value of the plant. To date no EDVs have been declared by the PBR Office.

Variety names

A variety name is also covered by PBR, although the name must not be likely to deceive or cause confusion, and may not be a trade mark for a plant or plant tissue or the name of a person or organisation without their consent.

The registered variety name can be used on a plant label together with the PBR symbol to properly identify that the variety is covered by PBR. The variety name should appear in single quotation marks after the botanical name and the PBR logo may be used beside the variety name to indicate that the variety is covered by PBR. In addition, the label can include a statement that unauthorised commercial propagation or any sale of propagating material of the variety is an infringement under the Plant Breeders' Rights Act.

The exclusive rights of a PBR owner

A plant breeders’ right owner can prevent others from using their registered variety and variety name in specific acts, including:

• produce or reproduce the material;
• condition the material for the purpose of propagation;
• offer the material for sale;
• sell the material;
• import the material;
• export the material;
• stock the material for any of the purposes described above.

Limits and exclusions on Plant Breeders’ Rights

PBRs do not extend to excluding others from using the registered variety for private or non-commercial applications or for the purpose of plant breeding or experimentation.

Rights only extend to harvested material or products obtained from harvested material through unauthorised use of propagating material if the owner has not had a "reasonable opportunity" to exercise his or her rights in relation to the propagating material. A party may seek revocation of a PBR on the grounds that facts existed prior to grant that would have resulted in refusal to grant the PBR, or for failure to pay a renewal fee.

Term of protection and effect of grant

The term of a PBR is 20 years from the date of grant for all varieties except trees and vines, which are protected for 25 years. PBRs cannot be exercised before grant. However, after grant the owner is entitled to reasonable compensation for activities undertaken during the application period which would constitute an infringement after grant.

Registration of Plant Breeders’ Rights

The person (or persons) who bred the plant variety or his or her successor in title can apply for and obtain a PBR.

Criteria for registration

To register a plant variety the PBR Office must be satisfied that:

1. the variety has a breeder and
2. that the variety is new, uniform, stable and clearly distinguishable from any other variety, the existence of which is a matter of common knowledge.

A variety is deemed to be ‘new’ if it has not been exploited or has only recently been exploited:

• A variety has not been exploited if at the date of lodging the application plant material of the variety (this includes propagating material, harvested material and products from harvested material) has not been sold to another person by or with consent of the breeder.
• A variety has only recently been exploited if at the date of lodging the application plant material of the variety has not been sold to another person by or with consent of the breeder:
  • in Australia – more than one year before the priority date; or
  • in other UPOV Convention countries – more than six years (for trees and vines) or four years (for other plant species) before that date.

Deposits

Propagating material of the variety must be deposited for storage in an approved genetic resource centre prior to grant.

The PBR application process

Plant Breeders’ Rights applications are filed in two parts:

1. An initial Part I application sets the priority date for the application, unless the applicant wishes to rely on an earlier priority date (no more than twelve months earlier) from an overseas application.
   
   The Part I application sets out details of the applicant and breeder and must indicate how the new variety is distinct, uniform and stable. A photograph of the variety is also generally required. The Part I application is examined and "provisional protection" is afforded once the Part I application is accepted.
2. Part II applications must be filed within twelve months of Part I’s acceptance and include:
   • particulars of the characteristics that distinguish the variety from other plant varieties that are common general knowledge, including the particulars of growing trials if these are required
   • a certificate completed by an approved ‘Qualified Person‘ verifying the particulars of the detailed description.
   
   The Part II application is published and an opposition to the application may be filed by a person who considers that his or her commercial interests would be affected by the grant of the PBR. An opposition may be filed at any time after acceptance of the Part I application and before six months after the Part II application is published.

Find out more

Davies Collison Cave is Australia’s largest and most experienced patent attorney firm. If you have any queries about plant protection or any other area of intellectual property, we can customise a presentation to suit your needs. For further information or advice please contact your nearest Davies Collison Cave office.