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A Guide to Plant Breeder’s Rights in Australia and New Zealand: Part 4

This article represents the final instalment of our 4-part series guide to Plant Breeder’s Rights (PBRs). In part 1 of the series, we discussed some general considerations that may be of interest to Applicants seeking to apply for PBRs in Australia and in New Zealand. This was followed by part 2, whereby we outlined the application process for PBRs in both these jurisdictions. Part 3 discussed how Applicants can seek international protection for new plant varieties. The present finale hereby presents other considerations that may be interest to Applicants of PBRs.

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Licensing and infringement

Once an Applicant has a granted PBR, it is possible for the owner of that right to license their commercial rights to others.

Where the licensor has the discretion to grant sub-licenses, each of the individual sub-licenses (if there are more than one) must be authorised by the holder of the PBR. The benefit of issuing a number of sub-licenses is that different contractual responsibilities can be delegated to each of its sub-licensees. These can also include arrangements concerning marketing responsibilities, to manage supply of the produce to market, whilst ensuring the growers of the relevant produce receives a valued return. Breach and/or infringement of any of the conditions outlined in the license of a granted PBR often result in disputes between the licensor and the licensee.

In light of the latest amendments made to the Australian Act, exclusive licensees are now afforded the rights to initiate infringement proceedings of the PBR which is the subject of the licence under certain conditions, whereas previously this right resided with the holder of the PBR, which often led to issues especially where the PBR holder does not have the same commercial goals as the exclusive licensee.  

Exclusive licensees in New Zealand also have the same rights to initiate infringement proceedings, as in Australia.

In the Australian case of Zee Sweet Pty Ltd v Magnom Orchards Pty Ltd & Others [2003] VSC 486, the exclusive licensee (Zee Sweet Pty Ltd) granted a sublicense to Magnom Orchards, to grow and sell their fruit varieties, which in this case concerned nectarines and peaches. It was contended that Magnom Orchards infringed the agreements of the sublicense. Magnom Orchards was ultimately ordered to pay Zee Sweet Pty Ltd damages and the trees of the protected variety were all destroyed as a result of the agreement breach. This case has served as an important reminder that all parties to a contractual agreement related to a PBR must fully understand their rights and obligations in relation to their conduct and activities, in order to avoid any confusions that could lead to the break-down of working relationships related to the PBR.

Essentially derived variety (EDV) – protection for a non-PBR-protected variety

The recent amendments to the Australian Act have also extended protection to non-PBR-protected plant or fungi varieties. This means that protection is extended to plants that have been derived from a protected parent plant or fungi variety, provided that a declaration has been made stating that the derived plant has been predominately generated from the initial variety, in such a way that the essential characteristics of the variety are largely maintained in terms of its genetic composition. However, in order for such protection to be extended in this manner, it is required that the variety in question should be distinct enough to qualify for PBR registration in their own right. Extension of the PBR into the derived plant or fungi variety, results in the generation of an essentially derived variety (EDV).

This form of protection for essentially derived varieties has been a welcomed change in light of the previous provisions of the Act, whereby it was often the case that third party breeders could introduce minor alterations to a derived plant variety, such that they could avoid infringing on the granted rights of a breeder of the initial plant or fungi variety.

EDVs are also newly introduced to the New Zealand Plant Variety Act.

How else can a plant breeder protect their plant variety rights?

Applying for a PBR is just the beginning of a plant breeder’s journey in intellectual property rights. It may be of interest to note that plant breeders may be eligible for patent and/or trade mark protection, in addition to the PBR. For example, a plant breeder may seek trade mark protection for the brand under which the new plant variety is sought to be sold under.

In addition, the plant breeder may seek patent protection if the new plant or fungi variety has utilised genetic modifications or novel reproductive techniques or methods during its development, for example this may encompass marker-assisted breeding to select for desirable qualities in the new plant or fungi variety, plant embryo culture, the generation of transgenic plant genes, or even the method by which genetic modification is conducted, if the method is new and inventive when compared to conventional methods used in the field.

Patent protection is useful to a plant breeder if there is some economical benefit that may be derived from development of the new plant variety, whether this may be therapeutic or commercial use of the plant or part of the plant. For example, the resultant new plant or fungi variety may exhibit desirable genetic or phenotypic traits such as improved resistance to pests, diseases, or even improved tolerance to abiotic stresses such as extreme temperatures, humidity and/or salt concentrations.

However, there are some important considerations that should be taken into account with respect to seeking patent protection for a new plant variety.

Support, sufficiency and best method – considerations for patenting plant varieties

In Australia, to satisfy the best method requirements, it is essential that the patent specification discloses the method steps for reproducing the plant variety. These include any selective breeding steps, or methods that involve genetic modifications. For plant varieties that are reproduced using standard plant breeding techniques, information on the methods and breeding crosses performed must be disclosed. In addition, the parent plant variety must be publicly available, whether commercially or via an accessible deposit under the Budapest Treaty, or they must satisfy the requirements of section 40(2)(a) of the Patents Act.

The patent specification must also describe characteristics of the plant, including: the leaf (e.g. shape and length), stem (e.g. branching habits), flower (e.g. colour, size, number of petals, presence or absence of sepals, pollen morphology, carpal and stamen number), root, fruit, resistance to herbicides or pesticides (if any), and scientific analyses (e.g. genetic profile, isozyme analysis etc, if available). The description must not use subjective terms such as, tall and bright.

Applicants may provide photographs of the plant variety, if the characteristics of the plant can be easily seen. Photographs may be used to assist with identification of colour, on for example the flowers.

Any chance mutations are therefore not patentable, since these would not be able to reliably reproduce the plant variety, which was discussed in the case of the “Scarlet Queen Elizabeth” Rose. In this case, it was held that the process of reproducing the plant was not sufficiently disclosed due to the fact that the plant had been produced by a rare genetic mutation. The probability of the chance genetic event was determined to be 1 in 100,000,000, which was not possible to reproduce in light of the current methods at the time. In terms of probabilities, it is important to note that the standard of repeatability depends on whether the result can be reproduced to a practical level acceptable to a person skilled in the art. Thus, some trial and error is considered acceptable for achieving a desired result, when assessing best method requirements. If there is uncertainty as to the reproducibility of a provided method, the Patent Office would typically accept that the best method has been provided, if a statement is disclosed in the specification to the effect that it is practical to repeat the invention using the current state of the art techniques to carry to the number of trials necessary to achieve the desired result.

Key points

Bringing together the four-part article series on PBRs, we wish to emphasize that plant breeders seeking to obtain a PBR should be aware that there are some differences between the application process for a PBR between different jurisdictions, including that in Australia and that in New Zealand. However, there are also some similarities, including the need for the new plant variety to satisfy the requirements of being distinct, uniform and stable. Applicants seeking to obtain international rights for their new plant variety are advised to take advantage of the UPOV system, if the first PBR application has been made in a member UPOV country, so that priority can be claimed from the first filed PBR application.

Whilst we strongly encourage plant breeders to also apply for other forms of intellectual property protection, such as patent and/or trade mark protection to maximize protection of their new plant variety, the process of applying for a PBR remains to be the cheapest form of protection for new plant varieties. It is also much quicker to obtain and the examination process of a PBR application is much easier than for example, a patent or a trade mark, especially since a new plant variety needs only satisfy the criteria of being distinct, uniform and stable when compared with other similar varieties. In other words, there is no criteria for inventiveness.

If you have any questions in relation to the above, or in relation to any of the articles in this PBR series, please feel free to contact our attorneys. We would be happy to assist you with any questions you may have in relation to this niche area of Intellectual Property Law.