Plant Breeders Rights

This chapter briefly explores plant breeders’ right (PBR) including the origins of PBR, international frameworks, criteria for protection, concerns and controversies over PBR and Australia’s Plant Breeder’s Rights Act 1994 (Cth).

Plant breeder’s rights (PBR), sometimes known as plant variety rights (PVR), are a form of intellectual property protection designed to protect new varieties of plants. Referred to as sui generis national PBR laws are (with a few exceptions) 1), based on the International Convention for the Protection of New Varieties of Plants (UPOV Convention).

Adopted in 1961, the UPOV Convention has been revised three times: in 1972, 1978 and 1991 2). As of January 2019, there are 75 UPOV Members.For details on UPOV members see the [UPOV Website].

As the only international treaty concerned with intellectual property protection of new plant varieties, the UPOV Convention plays a key social, political and economic role in the development of new plant varieties. New plant varieties are important to overcome a raft of issues including food security, climate change and environmental degradation.

The purpose of UPOV is ‘to provide and promote an effective system of plant variety protection, with the aim of encouraging the development of new varieties of plants, for the benefit of society’. 3)

Article 27(3)(b) of the TRIPs Agreement

The TRIPs Agreement requires members of the World Trade Organization (WTO) to have some form of protection for plant varieties. While this is often in the form of PBR and/or patents this is not always the case. Specifically, Art. 27(3)(b) of TRIPs sets out an obligation for WTO Members to provide some form of protection for plant varieties, specially '…[m]embers shall provide for the protection of plant varieties either by patents or by an effective sui generis system or by any combination thereof 4).

The question of whether the UPOV Convention is ‘effective’ is a vexed one. The language of ‘effective’ is used by both UPOV and the TRIPs Agreement; although it is not necessarily used explicitly in the same context. The argument is that by providing intellectual property protection, in the form of a targeted and specific scheme such as PBR, plant breeders will be encouraged to develop new plant varieties. However, several countries – including India, Nepal and Sri Lanka – have not joined UPOV or implemented UPOV-compliant national PBR legislation. Instead, they have opted to provide ‘effective’ plant breeders’ rights in ways other than the UPOV Convention (though they have adopted some aspects of the UPOV Convention).

While there is some flexibility in TRIPs over how to ‘effectively’ protect plant varieties, increasingly trade and economic agreements are removing this flexibility: requiring signatories to accede to or ratify UPOV 1991. This is important as UPOV 1991 strengthened PBR Protection, which some have argued is at the expense of farmers and local communities 5).

PBR are territorial in nature, and varieties need to be registered in the country in which protection is sought. The duration of PBR is generally 25 years for trees and vines and 20 years for all other plants 6).

PBR were originally developed as an alternative to patents and were first recognised internationally by the 1961 International Convention for the Protection of New Varieties of Plants 7). UPOV 1961 was first revised in 1972 and again in 1978 and 1991.

Importantly, countries remain Members of different versions of the UPOV Convention. As of January 2019, there were 75 UPOV members: 57 of which comply with UPOV 1991, 17 with UPOV 1978 and 1 with UPOV 1961/1972.
A brief outline of UPOV 1978 and UPOV 1991 is provided below.

UPOV 1978

The 1978 version of the UPOV Convention recognises the so-called ‘farmer’s privilege’ allowing farmers to re-use propagating material from the previous year's harvest and to freely exchange seeds of protected varieties with other farmers. UPOV 1978 also provides exemptions for non-commercial research, and for the development of new plant varieties.

UPOV 1991

UPOV 1991 strengthened PBR protection, removing the breeder’s exemption from essentially derived varieties and leaving it up to individual countries to determine whether to apply the farmers’ privilege within their territory.

The main argument for PBR is that it encourages the development of new plant varieties. More specifically, by providing sui generis protection – that includes specific exceptions such as the breeder’s exemption – it is argued that PBR increases the yield of important crops, increases income for farmers and supports rural development.

UPOV has a range of videos espousing the benefits of PBR 8).

To be protected, a plant variety must have a breeder and be new, distinct, uniform and stable as defined by the UPOV Convention:

BreederA breeder is a person who has bred, or discovered and developed, a plant variety, or their employer or contractor who has commissioned the work, and their respective successors in title 9).
NewA variety is generally considered new if it has not been sold (with the breeder’s consent) for a period specified in national law 10).
DistinctA variety is distinct if it is clearly distinguishable by one or more characteristics which can be clearly described from any other variety whose existence is a matter of common knowledge at the time of application 11).
UniformThe requirement that the variety be uniform means that a variety must be sufficiently consistent in those characteristics that make it distinct 12).
StableA variety must remain true to description after repeated propagation or reproduction 13).

Plant varieties must also have a variety denomination in accordance with Article 20, UPOV 1991. An important feature of the PBR system is the way in which the interests of breeders, growers, and researchers have been accommodated through exceptions or limitations to the scope of the breeder’s right.

Some key exemptions in PBR include:

  • private or non-commercial purpose: for example: subsistence farmers who propagate a protected variety to produce food for consumption (by the farmer and her family) is excluded from the scope of the breeder’s right 14).
  • plant breeding: this considers the nature of plant breeding and the importance of the continued development of new plant varieties and permits the use of protected plant varieties as an initial source of genetic variation 15).
  • farm saved seed: there is an ‘Optional Exception’ that allows national governments to permit, ‘within ‘reasonable limits and subject to the safeguarding of the legitimate interests of the breeder’, the saving of seed and other propagating material (to be used as propagating material, not sold, on their own holdings).16)

Are PBR needed?

One of the persistent concerns over PBR is that it is, and perhaps has always been, unnecessary and obsolete. As early as the 1980s, William Cornish argued that the changing nature of science and technology meant that plant breeders would attain more adequate and appropriate protection through patent law and ultimately questioned whether ‘the [PBR] regime had a viable future’ because it obstructed the ‘logical framework of protection’, namely the use of patents for the protection of plant material 17).

The claim that PBR is obsolete and outmoded tends to be expressed either explicitly or implicitly in the argument that PBR is rooted to a technological paradigm (e.g. phenotype: observable characteristics such as plant height and colour) while the science and technology of plant breeding is advancing (e.g. genotype: using molecular or genotypic information). Consequently, PBR has been labelled outmoded, a Neanderthal and obsolete by some scholars 18).

In contrast, others have argued that to take PBR seriously we need to take the time to identify and analyse the various heterogenous elements and actors that have established and maintained PBR 19). In so doing, it becomes apparent that PBR serves an important function and embodies a level of richness, context and complexity that technological determinism (e.g. phenotype versus genotype) ignores: for instance, end-users of plant varieties are not particularly interested in the DNA sequence of their new wheat, rose or lettuce variety. Furthermore, PBR has achieved a great deal, and the PBR scheme informs and underpins the work of many actors including plant breeders, taxonomists, researchers, lawyers and advocates.

Proof

PBR, like other forms of intellectual property, suffers from the problem of proof. As we have seen already, the purpose of the UPOV Convention is to ‘provide and promote’ effective plant variety protection and encourage the ‘development of new varieties of plants for the benefit of society’20)). However, not everyone believes that it does this 21). And over the years, a number of countries – including India and Nepal – have not joined UPOV or implemented UPOV-compliant national, plant variety protection.

It must be pointed out, however, that the problem of proof is not unique to PBR. Evidence in support of intellectual property is notoriously difficult to measure, distil and substantiate.

As Merges states:

'Estimating costs and benefits, modelling them over time, projecting what would happen under counterfactuals (such as how many novels or pop songs really would be written in the absence of copyright protection, and who would benefit from such a situation) – these are all overwhelmingly complicated tasks. And this problem poses a major problem for utilitarian theory. The sheer practical difficulty of measuring or approximately all the variables involved means that the utilitarian program will always be at best aspirational' 22).

Farmers and Biodiversity

There are a range of concerns over PBR that can be broadly construed as relating to farmers’ rights, conservation and biodiversity.

The proliferation of forums and institutions dealing with plants and plant genetic resources has meant that there are differing interests related to plants and plant genetic resources. For example, the Convention on Biological Diversity (CBD), and the 2010 Nagoya Protocol on Access to Genetic Resources and Equitable Sharing of Benefits Arising from their Utilization (Nagoya Protocol), impose an obligation to equitably share the benefits of genetic resources 23)). While the International Treaty on Plant Genetic Resources for Food and Agriculture (Plant Treaty) aims to guarantee food security through the conservation, exchange and sustainable use of the world’s plant genetic resources for food and agriculture and has in so doing recognised farmers’ rights 24)).

Several countries (e.g. India and Brazil) have opposed PBR because it restricts the rights of farmers to use saved propagating material including seeds. In 2001, India introduced the Protection of Plant Varieties and Farmers' Rights Act that allowed farmers to save, use, sow, re-sow, exchange or sell the farm saved seed of a registered plant variety. In so doing, India was one of the first countries in grant rights to both breeders and farmers.

Australia is a Member of UPOV 1991, and this is the basis of Australia’s Plant Breeder’s Rights Act 1994 (Cth) 25) 26). The constitutional validity of plant variety protection was challenged in Grain Pool of Western Australia v Commonwealth 27), with the majority of the High Court concluding that the PBR Act (and earlier PVR Act 1987 (Cth)) were valid under the intellectual property power of the Constitution 28).

The PBR Act establishes Australia’s system of registration of new plant varieties. There are five key features of the PBR Act which will be discussed below.

Application Process

Under Australian PBR legislation and regulations, the application process involves numerous stages, and the time and cost involved will vary depending on the variety. Broadly stated, once you are satisfied that your variety meets the requirements of registration, and that your variety is not already registered, the application process involves:

  • Provisional Application;
  • Nomination of a Qualified Person (i.e. an expert in a particular plant group, accredited by us to certify applications);
  • Growing Trials; and
  • Final Application.

See IP Australia for more details - [https://www.ipaustralia.gov.au/plant-breeders-rights/applying-pbr]

Requirements of Registration

Because Australia is a member of UPOV (and has acceded to UPOV 1991) the requirements for registration are similar to those outlined above in 4.0 (i.e. there are only a few minor differences to the language of UPOV 1991). Under section 43 of the PBR Act a plant variety in which an application for PBR is made is registrable if the variety:

Table:

Has a breederSee s 3(1) of the PBR Act for definition of breeder.
Is distinct Varieties are distinct if they are clearly distinguishable from another variety that is a matter of ‘common knowledge’ at the date of filing the application 29)
Is uniform A plant variety is uniform if, subject to the variation that may be expected from the particular features of its propagation, it is uniform in its relevant characteristics on propagation 30).
Is stable A plant variety is stable if its relevant characteristics remain unchanged after repeated propagation 31).
Has not been exploited or has been only recently exploited See s 43(1)(5) and (6) of the PBR Act for the definitions, but generally this means that the variety has not been sold in Australia more than one year before the date of lodging the application; or outside of Australia: more than six years before that date (for trees and vines) or more than four years before that date (in all other cases).

In addition to the above criteria, a new plant variety has to be named in accordance with s 27 of the PBR Act.

Rights of the Breeder

A valid PBR gives the owner (initially, the breeder) a number of rights. For example, holders of PBR have exclusive rights in relation to the propagating material to:

• produce or reproduce the material; • sell or offer for sale; • import or export the variety.

While these rights are primarily in relation to the commercialisation of propagating material 32), they may also apply to harvested material 33), products obtained from harvested material 34), and to derivative varieties in certain circumstances 35).

Exceptions

An important feature of the PBR system is the way in which the interests of breeders, growers, and researchers have been accommodated through exceptions or limitations to the scope of the breeder’s right. Some exemptions under the PBR Act include:

Acts done for private, experimental or breeding purposes

Under s 16 of the PBR Act, the PBR owner’s rights are not infringed by acts that are done:

         (a)  privately and for non-commercial purposes; or 
         (b)  for experimental purposes; or 
         (c)  for the purpose of breeding other plant varieties.

Farm saved seed

Section 17 of the PBR Act sets out that in certain (limited) circumstances the rights of a PBR owner are not infringed by:

  • the conditioning of so much of that further propagating material as is required for the person's use for reproductive purposes 36)); or
  • the reproduction of that further propagating material 37)).

Therefore, in certain circumstances, growers can save propagating material to sow in following years. There has been some doubt about the practical effect of the farm-saved seed exception after the Federal Court’s decision of Cultivaust v Grain Pool Pty Ltd 38).

While growers can save seed indefinitely there is a limit on a grower’s ability to commercially sell second (and further) generation crops from saved propagating material.

To overcome any uncertainty about whether growers can commercially sell these second and future crops, many owners of protected varieties expressly prohibit growers from saving seed under the “Grower Agreement” or “Licence”.

Essentially Derived Varieties (EDVs)

Another important feature of PBR are essentially derived varieties (EDVs). In short, EDVs extend the protection of PBR to those varieties that are essentially derived from a protected variety: s 12, PBR Act. See also s 23, PBR Act.

Before recent changes, a declaration of EDV could only be made if there was an application for or grant of a PBR in respect of the alleged EDV. In other words, the only way a PBR rights holder can seek redress for EDV was if the later variety is registered for PBR. Now, however, the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) has amended the PBR Act so that an EDV declaration can be made in respect of a non-PBR plant varieties 39).

PBR, like all forms of intellectual property, does not operate in a vacuum: it is, therefore, important to consider how PBR overlaps and intersects with other areas of intellectual property (e.g. patents and trade marks) and law more generally (e.g. licensing).

Plants and Patents

The patentability of plants is not uniform in all countries. In some countries and regions (e.g. Europe) plant varieties are, in certain circumstances, not patentable 40). In other countries (e.g. United States and Australia) plants can be patented as long as the legal criteria for patentability are satisfied ( See Patent Chapter).There is a range of patentable subject matter for plants, including new plant varieties; plant components such as genes and chromosomes; reproductive material (for example, seeds and cuttings); products from plants including fruit, flowers, oils, chemicals or pharmaceuticals; genetic engineering techniques; and breeding and cultivation methods.

There may be different patent schemes available for patents. These include standard patents and specific plant patent schemes (e.g. the United States Plant Patents Act of 1930).

Some differences between patents and PBR

Broadly stated, there are some important differences between patents and PBR schemes which will be discussed below.

Breeders Exemption

Unlike plant variety rights, there is often no breeding exemption under patent law.

Farm Saved Seed

Under plant breeder’s rights, in limited circumstances there are exceptions to the rights of the plant breeder, including farm-saved propagating material. In contrast, patent law generally does not include an equivalent exception. Though, in some countries or regions farmers can use patent protected seeds for their own use.

Naming Plants

Plant breeders want a name that is distinctive so that people will recognise it in the market place; marketers want a catchy name that is easily recognised by consumers. This means plants often end up with multiple names. This also means that there are a range of laws, regulations and scientific conventions that need to be considered when naming a plant.
There are four key systems used for naming plants. Each have rules which limit the names and how they can be used.

These are the:

i. scientific name, which is governed by the international rules for naming plants;

ii. plant breeder’s rights (PBR) variety name, which is governed by the rules in domestic PBR laws;

iii. branding or marketing name, which is governed by the rules in the trade marks law, common law rules relating to passing off, and rules imposed by consumer protection legislation relating to deceptive and misleading conduct; and

iv. common name, which is used in everyday language instead of the more complex Latin scientific name or the brand name.

A good example of the interaction between PBR and trade marks is Pink Lady apples: with numerous plant varieties (variety denominations) of apple being sold under the Pink Lady trade mark.

Grower Licences

While the PBR Act gives the breeder the exclusive right to commercialise the variety, it does not stipulate how this is to be achieved. It is therefore left to the owner to determine how the protected variety is used. Typically, this is done by way of contract (often referred to as a “Grower Agreement” or “Grower Licence”) which sets out the terms and conditions by which the variety can be used.

Specific clauses may relate to terminating the contract, costs and terms of use, including restricting farm-saved seed (often referred to as non-propagation clauses). Importantly, a contract that prohibits the saving of seed (or other propagating material), overrides the exception in the PBR Act.

  • Unordered List ItemSun World International Inc v Registrar, Plant Breeder’s Rights [1997] FCA 924;
  • Grain Pool of WA v The Commonwealth [2000] HCA 14;
  • Cultivaust Pty Ltd v Grain Pool Pty Ltd [2005] FCAFC 223;
  • Fleming’s Nurseries Pty Ltd v Sicliano [2006] FCA 757;
  • Fleming’s Nurseries Pty Ltd v Hannaford [2008] FCA 591;
  • Elders Rural Services Australia Limited v Registrar of Plant Breeder’s Rights [2012] FCAFC 14;
  • Buchanan Turf Supplies Pty Ltd v Registrar of Trade Marks [2015] FCA 756.



1)
For example, in 2001 India introduced the Protection of Plant Variety and Farmers Rights Act.
4)
TRIPs, Art. 27(3)(b)
5)
See, for example, Stephen Brush, ‘Farmers’ Rights and Protection of Traditional Agricultural Knowledge’ (2007) 35(9) World Development 1499; Elisa Da Vià, ‘Seed Diversity, Farmers' Rights, and the Politics of Repeasantization’ (2012) 19(2) International Journal of Sociology of Agriculture & Food 229
6)
Art. 9, UPOV 1991
7)
UPOV 1961
9)
Art. 1(iv), UPOV 1991
10)
Art. 6(1), UPOV 1991
11)
Art. 7, UPOV 1991
12)
Art. 8, UPOV 1991
13)
Art. 9, UPOV 1991
14)
Art. 15(1)(i), UPOV 1991
15)
Art. 15(1)(iii), UPOV 1991
16)
Art 15(2), UPOV 1991
17)
William Cornish, Intellectual Property: Patents, Copyright, Trade Marks and Allied Rights (Sweet and Maxwell, 1989), p148 at note 37
18)
See, e.g., Cary Fowler, Unnatural Selection: Technology, Politics and Plant Evolution (Gordon and Breach, 1994), p. 152; Mark Janis and Stephen Smith, ‘Technological change and the design of plant variety protection regimes’ (2007) 82 Chicago Kent Law Review 1557
19)
See, for example, Jay Sanderson, Plants, People and Practices: The Nature and History of the UPOV Convention (2017, Cambridge University Press)
20)
Since 2000, UPOV has taken some initiatives to show the benefits of the UPOV Convention and the convenience of adopting a ready-made system of plant variety protection. See, e.g., Jay Sanderson, ‘Why UPOV is relevant, transparent and looking to the future: a conversation with Peter Button’ (2013) 8(8) Journal of Intellectual Property Law & Practice 615, 622; UPOV, Council: Forty-Seventh Ordinary Session, C/47/4 (12 August 2013
21)
Niels Louwaars et al., Impacts of Strengthened Intellectual Property Rights Regimes on the Plant Breeding Industry in Developing Countries: A Synthesis of Five Case Studies (World Bank, 2005). See also Robert Tripp, Niels Louwaars and Derek Eaton, ‘Plant variety protection in developing countries: a report from the field’ (2007) 32 Food Policy 354)
22)
Robert Merges, Justifying Intellectual Property (Harvard University Press, 2011), pp. 2–3
23)
Convention on Biological Diversity (1992) 1760 UNTS 79 (‘CBD’
24)
International Treaty on Plant Genetic Resources for Food and Agriculture (2001) 2400 UNTS 303 (‘Plant Treaty’). See also Juliana Santilli, Agrobiodiversity and the Law: Regulating Genetic Resources, Food Security and Cultural Diversity (Routledge, 2012). For a discussion of some of these issues as they relate to customary law see Brendan Tobin, Indigenous Peoples, Customary Law and Human Rights–Why Living Law Matters (Routledge, 2014
25)
PBR Act
26)
Initially the Australian Government introduced the Plant Variety Rights Act 1987 (Cth): this was repealed and replaced by the PBR Act.
27)
Grain Pool of WA v The Commonwealth [2000] HCA 14
28)
s 51(xviii
29)
s 43(2), PBR Act
30)
s 43(3), PBR Act
31)
s 43(4), PBR Act
32)
s 11, PBR Act
33)
s 14, PBR Act
34)
s 15, PBR Act
35)
s 12, PBR Act
36)
s 17(1)(d
37)
s 17(1)(e
38)
[2005] FCAFC 223
39)
s 40, PBR Act
40)
Plant varieties are excluded from patentability under the European Patent Convention (EPC). Importantly, though, the exclusion has been narrowly interpreted so that only claims to one or more plant varieties are excluded. In 2017, Rules 27 and 28 of the EPC were amended: clarifying the interpretation of Art. 53(b) of the EPC that plants obtained by essentially biological processes are not patentable. However, in case T 1063/18 the EPO Board of Appeal held that Rule 28(2) was incompatible with Art. 53(b) of the EPC
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