Earlier this year, IP Australia launched a new Plant Breeder’s Rights (PBR) search aimed at making it easier to search for plant varieties, check status and ownership details, see what varieties look like, and download detailed descriptions.
Considering this update to the IP Australia website and the significant effort that goes into the development of new plant varieties, we have put together the following 4-part guide which covers the main requirements and areas to consider when seeking PBRs.
What are Plant Breeder’s Rights and why are they important?
Plants are essential for a variety of reasons, not least of which they provide habitats for a range of species. They also help with the control of air pollution, soil quality, improve the well-being of people, provide medicines, and food for our wildlife as well as for ourselves. In at least the last few years there has been an increase in the global interest of plants, particularly in light of issues, such as that of global warming and climate change, green technology, and healthy food trends that rely heavily on plant-based diets. Given these changes and the importance of maintaining the earth’s biodiversity, over the years there has been a corresponding increase in the number of Applicants seeking plant breeder’s rights protection, with statistics showing there to be at least an increase of 12% of international filing within this space.
Plant breeder’s rights (PBRs), or plant variety rights (PVRs), as commonly referred to in New Zealand, refers to the protection that is provided when new varieties of plant and/or fungi are developed. PBRs offer a sui generis intellectual property protection, which seeks to encourage plant breeders to develop new plant varieties.
For those plant breeders, a PBR offers exclusive commercial rights over the new plant variety discovered. In Australia, the exclusive rights are for a period of up to 20 or 25 years, depending on the plant species, which includes all varieties ranging from trees, flowers, shrubs, vines, algae and fungi. The exclusive rights provide a plant breeder with the rights to produce, reproduce or propagate the plant and/or plant material for commercial or licensing purposes, sell or license the plant material, import and export the same, and to sell the commercial rights to another party. A period of 20 years of PBR protection is typically provided for most plant varieties, whereas an extended period of up to 25 years is usually provided for trees and vines, such as Actinidia (Kiwi fruit), Bougainvillea, Campsis, Hedera and Vitis (grapevine).
PBRs do not provide protection against any private or non-commercial use, any experimental use, for example, use for the purposes of breeding other plant varieties, and also farm saved seed.
Relevant legislation
In Australia, the Plant Breeder’s Rights Act 1994 is the latest Act relevant for providing for the granting of proprietary rights to breeders of certain new plant and fungi varieties.
The latest amendments applied to this Act derives from the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) (Amending Act), which received Royal Assent in Australia on 24 August 2018. The amendments came into effect on 24 February 2019 and helped to incorporate further provisions that allow for additional damages to be claimed in cases of infringement. New provisions have also been included in the Australian Act which concern recipients of unjustified threats now being able to counterclaim and potentially be awarded damages, clarity has been provided on the provisions that concern joint ownership of PBRs, and exclusive licensees now have the right to initiate infringement proceedings.
The latest Act that protects plant varieties in New Zealand is the Plant Variety Rights Act 2022, which came into effect on 24 January 2023. This Act replaces the Plant Variety Rights Act 1987 and has introduced a number of amendments that have brought the New Zealand Act closer to that of Australia, so as to facilitate international trade obligations under the Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP). Some changes include amending the term of protection, such that it now aligns with that in Australia, although the New Zealand Act further includes a 25-year term of protection for potatoes. The concept of essentially derived varieties has also been introduced in New Zealand, infringement proceedings can now only be initiated following grant of the plant variety right, farm saved seed is also exempted from protection, exclusive rights for producing, selling, importing/exporting of propagating material of the protected variety have now been extended where previously only the owner of the PBR held this right. Crucial to note that unique to New Zealand, a Māori plant varieties committee has been created under the Act to assess whether rights should be granted to indigenous plant species or a non-indigenous plant species of interest, and if so, under what conditions. Under the Act, it may be possible to refuse grant of a PBR if kaitiaki interests are affected. The New Zealand Act has also introduced a provision for compulsory licenses if there is public interest in a plant variety species.
What to consider before you apply for PBRs: Eligibility for PBRs
For a PBR to be granted in Australia, the plant variety must be the product of selective breeding, meaning that it cannot be found in nature. It must also be distinct, uniform and stable, and also new or recently exploited, which means that it must have either not been previously sold without the breeder’s consent, or if it has been recently exploited, it must have been within the first 12 months of filing the application for the PBR. If exploitation occurred overseas then its use must have occurred within the first four years prior to filing the PBR, with the exception of trees and some variety of vines, whereby this is extended to the first six years prior to filing the PBR.
The criteria as described above for Australia, is similar to New Zealand practice, with potatoes also being considered novel if overseas exploitation of such occurred within the first six years prior to the priority date of the PBR application.
Ownership
Only a breeder of a plant variety holds proper basis for entitlement to any application in relation to grant of a PBR in the plant variety. In some instances, however, it may be that the breeder developed the new plant or fungi variety as a matter of performing normal employment duties as required under contract of the employer, in which case entitlement of the PBR application will fall under an incorporated or unincorporated body. It is possible for 2 or more persons to jointly apply for a PBR.
Distinct, uniform and stable
It is essential that plant varieties have distinguishable features that provide unique characteristics relative to other known similar plant varieties. The plant offspring must be able to display uniformity in its distinguishing characteristics when propagated, both visually and in terms of physical characteristics, for example in height of the plant variety. Lastly, the characteristics of the new plant variety must be stable enough such that the characteristics remain unchanged following repeated propagation down two consecutive generation lines.
To demonstrate that the plant variety encompasses all these features, it is usual for Applicants to conduct a growing trial. Specifically, this entails growing the new plant variety alongside the most similar varieties of common general knowledge and performing comparative analyses. To ensure that the right comparisons are made as part of the growing trial, in Australia, a Qualified Person is normally consulted.
The above requirements for demonstrating whether the new plant variety is distinct, uniform and stable, is similar across most other jurisdictions, including New Zealand.
The Qualified Person
In Australia, it is essential that the appropriate Qualified Person is nominated since this person will be consulted for advice and guidance at various points throughout the PBR application process. The Qualified Person must be an expert in the particular plant group and must be accredited in order to be able to certify the PBR application and the claims made within said application. As part of the growing trials, the Qualified Person is also responsible for assessing the amount of permitted variation, when considering whether the new plant variety exhibits uniformity.
Thus, in Australia, the Qualified Person has a crucial role in formulating a trial plan and formalising arrangements for the growing trials. They also assist with determining the most similar plant varieties of common knowledge, for comparative analyses, and in addition they also assist with preparing detailed variety descriptions for use as part of the PBR application and also for publication in the Plant Variety Journal, as well as to collect and submit evidence in support that the plant variety satisfies all requirements for distinctiveness, uniformity and is stable when propagated, and to certify the PBR application.
We can assist you with finding the best Qualified Person to assist with your PBR application, in Australia.
On the contrary, in New Zealand, much of this process is centralised, in that the Plant Variety Rights Office (PVRO) is largely responsible for managing the growing trial and the evaluation of varieties, delegating others to carry out certain aspects of the trial and testing procedures, if it is deemed appropriate to do so. The PVRO has arrangements with industry or research organisations for performing plant variety testing at specified test centres, such that the Applicant need simply to supply the plant material for testing. The requirements for conducting the growing trials and all technical criteria are therefore the responsibility of the PVRO, with some exceptions, which will be discussed later in the guide.
If you have any questions in relation to any of the above, please do not hesitate to get in contact with our team. We will be publishing part 2 of the guide shortly, which will discuss the application process that is followed in both Australia and in New Zealand.