Patents and plants
In Australia there are two ways of obtaining intellectual property protection for plants:
- standard patents for plants in general and for specific cultivars
- plant breeder's rights (or PBR) for plant cultivars only
The advantage of obtaining both a standard patent and PBR for the same variety of plant breed is in that the patent offers protection against certain exemptions and dilution of rights provide by PBR. On the other hand PBR offers additional protection; protecting plant variety names and synonyms (not provided by patents) which are important in marketing plant varieties.
Plant material that can be patented
The range of patentable subject matter for plants includes:
- new plant varieties
- plant components such as genes or chromosomes
- reproductive material; e.g. seeds, whole plants, cuttings, cells or protoplasts
- products from plants including fruit, flowers, oils, starches, chemicals or pharmaceuticals
- plant material used in industrial processes; e.g. cell lines to produce processes relating to plants, including genetic engineering techniques, plant tissue culture, cell and protoplast culture, mutagenesis and breeding and cultivation methods
A standard patent is granted for an invention that is a new idea and provides a practical solution to a technological problem.
In this context, a standard patent would only be granted for subject matter that meets all the following tests:
- The matter arose because of a technical intervention of a person to produce something which is not the same as the natural source material. (A patent cannot be granted for a mere discovery of biological material - you cannot go out into the countryside, discover a new plant and get patent protection for it. Neither can you patent a new plant you have by chance found in your back-yard.)
- The matter is new in the sense of not previously being publicly available. (A patent cannot be granted for materials in their naturally occurring state or that have previously been made publicly available.)
- The matter is inventive when compared to what is known.
- The matter has been fully described so that enough information is provided to allow other people working in the same area of technology to make the product or perform the process without having to resort to invention. The best method of performing the invention known to the applicant must also be described.
- The matter has a demonstrated use. This means that there must be an actual use for an invention rather than just speculation as to future uses.
The written description
The specification must include a full description of the plant or plant variety itself as well as the best method of performing the invention known to the applicant. That is, the best way of obtaining the new product or performing the new process must be described in detail.
Full description of the plant or plant variety means an inclusion of the full morphological, biochemical and taxonomic characteristics of the organism known to the applicant.
It should also include a full description of any scientific testing characteristics (e.g. isozyme analysis, DNA profiling), if available. There must be sufficient clear information to enable the specialist to perform the invention without conducting undue experimentation or resorting to invention to discover the conditions necessary for the invention to work.
Describing a plant product
Where the invention is a plant product, for example an isolated gene, or a specific method, there should be sufficient details in the specification for a person working in the technical field to identify and repeat the invention.
Describing a plant variety
For a plant variety, a full description must be given of exactly how the plant you are seeking protection for is prepared. In addition, the parents of the variety must be easily available to the public in Australia (e.g. commercially available or in an accessible deposit) or be fully described themselves.
In the description of a plant variety, photographs must be included in the specification.
In order to satisfy full description requirements in the case of an invention involving a plant variety, in addition to the broad description all steps required to reproduce the plant variety must be disclosed in the specification.
Where the invention is in a complete plant
Where the invention resides in a complete plant, the entire organism must be described fully, with particular emphasis on the characteristics, or combination of characteristics, that are significantly different from known and related plants. Such a description enables the plant to be clearly identified and distinguished from known close relatives.
For the requirements of full description to be met, there must be a detailed taxonomic description of the plant.
It is essential that all biochemical data presented is fully explained and figures must incorporate scales of graphs or indicate the conditions under which the biochemical assays were run.
A patent monopoly is granted in return for a full written description of an invention, to ensure that other people are able to make a product or repeat a process once the patent period is over.
A person working in the particular technology must be able to repeat the process or reproduce the product from the directions given in the written description.
Transgenic plants and their seeds
The characteristics of the gene introduced into the plants must be described (preferably including the complete sequence of the gene), as well as the best method of transformation, regeneration and selection of the transformed plant or plant parts (e.g. protoplast or pollen). The host plant material must also be fully described and be readily available to the public.
The parent strains must be fully described and readily available to the public. The method of mutagenesis (e.g. chemical or UV radiation) must be disclosed.
The parent must be fully described and be readily available to the public. The different crosses conducted must be disclosed.
Innovation patent applications
According to the Australian Patents Act 1990, plants and animals, and the biological processes for their generation, are not patentable subject matter for an innovation patent.
However, it is possible to apply for an innovation patent on processes that use a plant or animal, or part of them, but that do not result in the generation of a plant or animal.
Seeking professional advice
For specific assistance and advice you can contact an IP professional.
Last Updated: 13/12/2012