Securing Growth: Navigating Plant Variety Protection in Australia
In Australia, new plant varieties can be protected under both the Australian Plant Breeder’s Rights (PBR) Act 1994 (the PBR Act) and Australian Patents Act 1990 (the Patents Act). Accordingly, consideration should be given as to whether it is appropriate to seek protection of a new plant variety under either or both regimes. Here we outline the rights obtained and the requirements for registration for both.
Patent Protection for Plant Varieties
Unlike in many other jurisdictions, plant varieties are not expressly excluded from patentable subject matter under the Patents Act. Moreover, the High Court of Australia has confirmed that there is “no intrinsic impediment to the patentability of plant varieties” [1].
Generally, the requirements for patentable subject matter under the Patents Act are met if there is a technical intervention of man which has resulted in an artificial state of affairs which does not occur in nature (i.e. the plant variety is “made”). A technical intervention of man leading to the generation of a new plant variety could include for example breeding, mutation or genetic engineering.
In practice, IP Australia applies the following principles from Ranks Hovis McDougall Ltd application (1976) [2] in determining whether a living organism, is patentable:
- No objection can be taken to a claim to a new organism on the ground that it is something living.
- Any new variants claimed must have improved or altered useful properties and not merely have changed morphological characteristics which have no effect on the working of the organism.
- Naturally occurring micro-organisms per se are not patentable as they represent a discovery and not an invention.
Although this decision related to micro-organisms, the principles can be applied to all living organisms, such as a new plant variety.
In addition to constituting patentable subject matter, the plant variety must be novel and involve an inventive step. In Australia, the prior art base for novelty and inventive step includes prior art information made publicly available in a single document (publication) or through doing a single act (prior use) anywhere before the priority date. The sale of plant seeds has been found to constitute a prior use capable of destroying novelty of the plant: “to make a plant all that the skilled worker needs to do is grow it from seed, assuming that the seed has the genetic information required to produce an infringing plant.” [3]. Thus, the claims to a plant were anticipated because the seeds inevitably provided the claimed plant. Traditional breeding techniques using naturally occurring varieties would generally not be considered to meet the inventive step requirement.
The requirements of full description of the patent application also must be satisfied, i.e. adequately describing the invention in words, or describing it in a manner that it is repeatable. These requirements can be met by making a deposit of reproducible biological material under the Budapest Treaty with a recognised International Depositary Authority (IDA) before the date of filing the patent application.
Patent protection also can be obtained for plant parts (e.g. seeds, cells, genetic material or other molecules), products derived from plants (fruit, flowers, oils), uses thereof, and methods for the generation of plants so long as they meet the patentability requirements.
A patent provides the inventor with exclusive rights to exploit the invention, or authorise another person to exploit the invention, as claimed:
(a) in relation to a product:
- (i) make, hire, sell or otherwise dispose of the product; and
- (ii) offer to make, hire, sell or otherwise dispose of the product; and
- (iii) use or import the product; and
- (iv) keep the product for the purpose of doing an act described in subparagraph (i), (ii) or (iii); and
(b) in relation to a method or process:
- (i) use the method or process; and
- (ii) do an act described in subparagraph (a)(i), (ii), (iii) or (iv) with a product resulting from the use of the method or process.
The Patents Act provides exemptions to infringement, including use of the product or process for experimental purposes. There is no equivalent breeder’s or farmer’s exemption.
Patent protection of a plant variety is granted for up to 20 years from the filing date of the patent application.
PBR Protection for Plant Varieties
Application and Registration
For registrability, a plant variety needs to have a breeder, be distinct, uniform and stable (DUS), and to not have been exploited (or recently exploited). Notably, the threshold for registrability is lower than compared with patents, as there is no novelty (in terms of absolute novelty) or inventive step requirement.
Under the PBR Act a plant variety (including algae and fungi)is defined by the expression of characteristics, such as physical, chemical or other biological characteristics resulting from the genotype.
To satisfy the DUS requirements, a variety is distinct if the expression of at least one of those characteristics is clearly distinguished from any other variety whose existence is a matter of common knowledge at the priority date. A variety is considered to become common knowledge once it has been commercialised[4]. The variety also must be uniform in the characteristics it expresses and stable after repeated propagation.
Overseas DUS reports can be used to satisfy the requirements. However, consideration should be given to whether the varieties of common knowledge (VCK) used in the overseas testing include those also available in Australia. An Australian verification trial may need to be conducted. If overseas data is used, then the PBR application will not be granted until the corresponding variety has been granted in the country where the DUS tests were conducted.
A Qualified Person (QP) must be nominated and is required to verify the application and inspect the variety, including any relevant overseas DUS reports, and advise the PBR Office in relation to examination. The QP is responsible for determining the relevant VCKs for considering the distinctiveness requirement.
In the circumstance that a variety was bred by a person in the course of employment, the employer can be the breeder.
A variety can be commercially exploited in Australia for up to one year before filing and overseas for up to 4 years before filing (6 years for trees and vines).
Propagating material of the variety must be deposited at an approved Genetic Resource Centre (GRC) before grant and maintained there for the duration of the PBR. This is to ensure that the variety is available for breeding and testing.
A PBR is granted for a maximum term of 20 years (or 25 years for trees and vines) from the date of grant.
Scope and Nature of the PBR
A PBR provides the breeder with exclusive rights in relation to propagating material of the variety to:
- 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 the purposes described in paragraphs (a) to (f).
Propagating material in relation to a plant variety is defined as “any part or product from which, whether alone or in combination with other parts or products of that plant, another plant with the same essential characteristics can be produced.”
In addition, the PBR may extend to “essentially derived varieties” (EDV) and certain dependent varieties. EDV include plants that are predominantly derived from the protected variety, retain their essential characteristics and do not exhibit any important (as distinct from cosmetic) features that differentiate them from other varieties. Dependent varieties include varieties that are not clearly distinguishable from the protected variety and cannot be reproduced except by the repeated use of the variety. The rights may also extend to harvested material in certain circumstances and to the name and synonym of the variety.
The PBR provides exemptions to infringement in certain circumstances, including:
- privately and for non-commercial purposes;
- experimental purposes; or
- for the purpose of breeding other plant varieties.
Conditioning and use of farm saved seed is allowed (otherwise known as “farmer’s privilege” or “farmer’s exemption”). This allows farmers who have obtained PBR protected material to condition and further propagate the material for reproductive purposes.
A Final Word on Plant Variety Names
Whilst both the name and synonym of a plant variety are protected, the exclusive right to the use of the name of the variety expires with the PBR itself and thus becomes available for others to use.
There are a few restrictions for naming plant varieties, including that the name must not include a trade mark that is registered or is being sought for registration in respect of live plants, plant cells or plant tissues.
There is no express prohibition of seeking registration of a trade mark for a plant variety. However, for a trade mark for a plant variety to be registrable, the extent to which the mark is inherently adapted to distinguish and its use will be considered. Thus, the variety name may not be able to be registered on the basis of it not being capable of distinguishing the source of goods once the PBR has expired[5].
To avoid this issue, registration could be sought for a preferred trade name that is different from the variety name. A trade mark registration also has the advantage that it may extend beyond the life of the PBR.
Key Takeaways
Australia does not expressly exclude a plant variety from patentable subject matter. Therefore, protection for a new plant variety can be sought under both the patents and PBR systems. Although considered a lower level of protection in terms of scope, the PBR regime should not be overlooked. With careful thought and planning, a very strong IP position could be obtained for a new plant variety, utilising Patents, PBR and Trade Marks, that could potentially extend beyond 20 years.
Contact the MBIP team for advice regarding plant varieties. Our expert attorneys would be glad to assist you.
[1] Grain Pool of WA v Commonwealth of Australia [2000] HCA 14, at [46]
[2] Ranks Hovis McDougall Ltd application (1976) 46 AOIP 3915
[3] Nuseed Pty Ltd and Norddeutsche Pflanzenzucht Hans Georg Lembke KG v Limagrain Europe [2025] APO 25, at [64]
[4] A single sale of the variety is sufficient for the variety to be considered to have been commercialised: See Majestic Selections Pty Ltd v Bushland Flora [2016] APBRO 1
[5] Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks [2015] FCA 756]
