Plant IP Protection in Australia: Patent, Plant Breeder's Rights, or both?

Author: David Myers and Simon Potter from Spruson & Ferguson

Australia has a significant agricultural industry, with a gross value of crops of approximately AU$25-30 billion dollars annually. This includes cereals, cotton and canola, but also a significant fruit and vegetable sector.

The Australian agricultural industry is technology intensive, and new plant varieties developed in Australia or overseas are adopted quickly to meet yield, market, disease and climatic demands.

Importantly, in Australia, plant varieties, including genetically modified plants, can be protected under both the Australian Plant Breeder's Rights Act 1994 (the “PBR Act”) and the Australian Patents Act 1990. By applying for protection under both systems, breeders can gain an extra layer of protection for their variety. In addition, protection under one system does not prevent a breeder from obtaining protection for their variety under the other.

We provide an overview of the two systems and the requirements for registration.

Australian PBR protection for plant varieties

A variety (plant, fungus or alga) is defined by a combination of physical, chemical or other biological characteristics expressed by the variety (including disease resistance). At least one characteristic must distinguish the variety from other commonly known varieties in order to be registrable.

The variety must also be “uniform” in the characteristics it expresses and be “stable” when bred over a number of generations. The variety need not be previously undisclosed or even uncommercialised: commercial exploitation can occur in Australia up to one year before application, and can occur overseas (in UPOV member countries) up to four years before the making of the PBR application for most plants, or up to six years for trees and vines.

UPOV convention priority from a foreign application can be claimed, although this usually introduces prosecution complications and limitations, and is typically not necessary.

Examination of a PBR application usually requires the involvement of an expert (or ‘Qualified Person’) for inspection of the variety and reporting to the PBR Office. Relevant overseas DUS (Distinctiveness, Uniformity and Stability) test reports can facilitate examination, although a Qualified Person is still required to review such reports and file a report at the Australian PBR Office.

Before grant of PBR, a deposit of propagating material must be made at an approved Genetic Resource Centre (GRC), and maintained thereafter for the duration of PBR protection.

Protection and Infringement

Protection under the PBR Act includes an exclusive right to produce or reproduce propagating material from the variety, and to sell, condition for sale, import or export such material. Under limited circumstances, rights may extend to material harvested from the variety. Rights may also extend to “essentially derived varieties”.

Independent of the usual infringement remedies (damages, account of profits and/or delivery up and destruction), the PBR Act also provides for prescribed penalties where a successful infringement action is brought by the Director of Public Prosecutions.

Exemptions to PBR infringement include use of a registered variety privately, for non-commercial purposes or for breeding other plant varieties. A further exemption exists for farm-saved seed.

PBR protection also protects the registered variety name and synonym from use in relation to similar plants.

PBR protection for a plant variety starts as ‘provisional protection’ during prosecution of the application (from the date the application passes formalities examination) and then officially starts from the date of grant of the PBR right and extends for up to 20 years for most plants and up to 25 years for varieties of trees and grape vines.

Australian Patent protection for plant varieties

Plant breeders can also apply for protection under the Australian patents system.

Patents legislation may provide a plant variety with protection for up to 20-years, from the date of filing of the patent application.

The scope of protection afforded by the patents system is significantly broader than that afforded by PBR. Unlike PBR, a patent allows protection for the plant variety per se, as well as for:

• any part of the plant (including harvested material, genes, proteins, other molecules);
• use of the plant variety or its part(s);
• methods of breeding plants using the protected variety and resulting progeny; and
• products derived from the plant.

In order to be patentable, a plant variety must meet the usual requirements, including that:

• the plant be novel in an absolute sense, non-obvious, and obtained using a reproducible method;
• the plant exhibits improved or altered useful properties; and
• derivation of the plant involves the intervention of man.

In deciding what constitutes human intervention, the Australian Patent Office treats the choice of parents and their selective breeding, followed by selection of the most desirable offspring as being sufficient.

Where an aspect of the invention claimed cannot be performed without a sample of the germplasm (which is most likely to be the case for a plant variety), a deposit at a Budapest Treaty Depository will most likely need to be made before the filing date of the patent application.