Plant Breeder's Rights

By Gabrielle Stannus

In Australia, the rights of plant breeders are protected under the Plant Breeder’s Rights Act 1994 (PBR Act). However, did you know in addition to PBR, there may be other forms of intellectual property available to you? Also, what would you do if you found that your PBRs were being infringed?

Nik Hulse is the Chief of Plant Breeder’s Rights, IP Australia, and is responsible for administering the PBR Act.

PBR protects new varieties of plants that are distinct, uniform and stable. “When we grant a (Plant Breeder’s) Right, it gives the breeder the right to exclude others from doing a number of acts. For example, without permission, they cannot commercialise the variety; they cannot import or export that variety. People cannot without authorization stock that material with the intention of commercializing it,” says Nik.

Additional protection of your intellectual property
In addition to PBR, there are other forms of intellectual property available to plant breeders including the following:

Trade marks
Trade marks are used to distinguish the goods and services of one trader from those of another. IP Australia states that “While a trademark cannot be used as a variety name, it can be used as a banner or brand under which a range or series of varieties can be sold.” 1

Patents
According to IP Australia: “A patent is a right that is granted for any device, substance, method or process that is new, inventive and useful. A patent is a legally enforceable right to commercially exploit the invention for the life of the patent.” 2

Nik says that since the PBR Act came in, applicants have preferred it to registering a plant variety for a patent. However, some breeders still choose to apply for a combination of the two. “For example, if you have some gene that is protected by patents and you incorporate that into a plant variety, you could have a patent on the gene itself and you could have a PBR on the plant variety. You have sort of a double-barrelled form of protection.” For example, Bt cotton.

Registering a cultivar
For breeders of Australian native plants, Nik explains that registering a cultivar with the Australian Cultivar Registration Authority (ACRA) may not provide any protection for the variety itself. However, Nik says that doing so may provide other advantages for a plant breeder.

“If you are a breeder and you do not want to protect your variety under PBR, maybe the variety is not economically worthwhile but still worth noting, you could put the variety through the ACRA and seek to have it registered. It would then mean that the variety would be considered a variety of common knowledge. If another breeder comes along later with a similar variety, and they seek PBR, it makes it much more difficult for them to turn around and say you're infringing my rights because you can say, well, I've already registered my variety with ACRA. So there is a definite advantage with ACRA.”

Commercial law contracts
“If you as the breeder have a PBR variety, you could enter into a contract with another grower for example, and you could have some conditions in there about how the variety is going to be handled outside of the PBR Act. For example, saying how the material will be propagated and commercialised. It does not really add any further protection to the variety. However, it does add more conditions around how the breeder expects the grower to handle the variety,” explains Nik.

What to do if you think your rights have been infringed
Mounting a case to ensure that you can establish that your protected variety has been produced, marketed and distributed illegally may not be as easy it appears. To establish legal action against an alleged infringer, IP Australia says that you must clearly prove that your intellectual property rights exist in law.

IP Australia does not instigate court action or police infringements. “Infringement actions can only be begun by the grantee or their exclusive licensee,” says Nik.

Nik encourages those grantees who believe their PBRs have been infringed to first consider alternative dispute resolution mechanisms as an alternative to court action which can be costly and time draining.

Greenlife Industry Australia is here to help
“If there are multiple infringements or illegal use of material, we can provide advice and help them through the process,” says Peter Vaughan, NGIA CEO.

Peter is well placed to provide representation on behalf of this industry when it comes to PBR issues. Peter was previously registered as a Qualified Person under the PBR Act, assessing PBR applications primarily involving production horticulture. He was also involved in the commercialisation of PBR lines for many years.

Peter is also a member of IP Australia’s Plant Breeder’s Rights Consultation Group. This group is the principal forum for discussion on those issues which could impact on plant breeder’s rights policy, practice and legislation in Australia. Other group members range from the Australian Centre for Intellectual Property in Agriculture (ACIPA) to the Institute of Patent and Trade Mark Attorneys of Australia (IPTA).

Nik adds: “It's a very important forum for us. We can identify the issues and try and work out a way in which we may be able to resolve that; whether it is changes to our education, legislation, website, procedure or policy”.

If you have any concerns about Plant Breeder’s Rights and other issues regarding the intellectual property of plants and plant materials that you would like Greenlife Industry Australia to take up on your behalf, please contact Peter Vaughan directly via peter.vaughan@greenlifeindustry.com.au or on (02) 8861 5100.

References
1. IP Australia n.d., ‘PBR and other IP rights’, viewed 19 August 2019, https://www.ipaustralia.gov.au/plant-breeders-rights/understanding-pbr/pbr-and-other-ip-rights

2. IP Australia n.d., ‘Patents’, viewed 19 August 2019, https://www.ipaustralia.gov.au/patents

Further reading
Plant Breeder’s Rights: If you are interested in applying for PBR, visit IP Australia for more information on PBR basics, legislation and the time and costs involved in the registration process.

International Union for the Protection of New Varieties of Plants (UPOV): Australia is a party to the UPOV ’91 Convention’ and therefore our laws on plant variety protection are in line with this convention.

Variety Central: An information source for Australian grain growers and industry, encompassing plant breeding, seed commercialization, varieties, royalties and other relevant information.