FOR IP PROFESSIONALS

Plant Breeder's Rights FAQs

Infringement

How can I be sure I am not infringing by propagating a PBR plant?

Check with the person from whom you received the propagating material. Also check whether the variety is protected by PBR by looking through the Plant Varieties Journal (PVJ) or searching on the PBR database. When in doubt, contact grantees for additional information.

Should I be concerned about infringing PBR?

Yes. The PBR grantee may initiate legal action against you seeking damages or an account of profits. The PBRA provides for penalties for infringement of the breeder's right of up to $85,000 for individuals and $425,000 for companies. There are penalties for other unlawful acts in relation to the legislation. If in doubt, you should approach the PBR grantee and determine whether their authorisation is required. Please be aware that ignorance of the law is not a defence against legal action.

Legal issues

If I purchase PBR protected seed, what are the typical limitations on the use of that seed?

There are no restrictions on the use of that particular batch of seed. Generally, the use of plant material produced by that seed is also free provided that it is not sold or conditioned as propagating material or contains propagating material exported to countries where PBR protection is not available. This means producers cannot sell/trade/barter/gift seed between themselves. If in doubt, you should approach the PBR grantee and determine whether their authorisation is required.

Is it possible to have PBR and patent protection in relation to the same variety?

Yes. Patents tend to protect a process or components of a variety, such as gene technology or gene sequences, whereas PBR protects the end product, that is, the plant variety as a whole.

Will the PBR office provide legal advice regarding the Plant Breeder's Rights Act 1994?

No, we will not provide legal advice. This should be sought independently. Most major law and Patent Attorney firms have competence in PBR matters.

Qualified Persons (QPs)

Can the requirement for stability testing be relaxed in some cases?

Yes, but it depends on the mode of propagation. Experience shows that uniform, asexually propagated varieties are stable. The same rule of thumb cannot be applied to heterozygous sexually produced plants. Accordingly the PBRO only considers applications to waive stability testing for sexually propagated varieties on a case-by-case basis. Where testing for stability is waived, more weight is placed on the assessment of uniformity.

How can the relationship between Australian conditions and 'example varieties' be clarified?

The UPOV Technical Guidelines (TGs) often contain the names of varieties that usually exhibit a particular state of expression for a specific characteristic. As most TGs have been developed overseas they may not be particularly well adapted for Australian conditions. Accordingly, the PBRO has produced an Australian list of example varieties for major taxa such as wheat, barley and oats.

Is information in the Part 1 Application generally accessible before a decision is taken to accept the application?

No, generally speaking. The application may only be made available to the public after a decision has been taken to accept the application (see sections 30(4)(b), (5)(b) and 34(5) of the Act) and on payment of the appropriate fee.

Is it intended to change the Part 1 requirements to include grouping characteristics?

Not at this time. The claim of distinctness may be based on characteristics that are not contained in UPOV guidelines.Moreover, several species do not have International Convention for the Protection of New Varieties of Plants (UPOV) guidelines. However, many QP's have proposed that grouping characteristics be collected and published to facilitate the choice of appropriate comparators. Consideration is being given to this proposal.

Should QPs receive some reward for establishing draft Technical Guidelines (TGs)?

No. It is part of the QP's function to prepare information to support their application and to demonstrate that the information meets the harmonised requirements of International Convention for the Protection of New Varieties of Plants (UPOV).

What are the implications of differences in variety descriptions arising from different environments?

It is widely accepted that a variety's phenotype will effected by its environment. Accordingly, a variety description may and probably will vary between different locations and years. However if the variety's distinctive characteristics vary substantially when it is regrown in the environment published in its description, legal disputes may arise as to whether access to that apparently different variety is subject to the PBR owner's authorisation. Such disputes may be settled in court.

What are the implications when claims of distinctness, uniformity and stability (DUS) made in Part 1 of the application are not substantiated in Part 2?

Claims of DUS are essential elements in determining eligibility. If claims made in Part 1 are not substantiated in Part 2 or new claims are not made in the Part 2, the applicant cannot meet the requirements that would result in a grant of PBR. If the Part 1 claims for distinctiveness are not substantiated, the QP will need to provide a written explanation, which should be forwarded to the PBR office when the Part 2 is submitted.

What can be done about the problems created by the failure of some varieties to grow true to their overseas descriptions in Australia?

Some varieties, tested in growing conditions vastly different to those in Australia, do exhibit different characteristics when grown in Australia. 'Grow outs' under local conditions should be conducted for 'problem taxa' (eg potatoes) and a 'new' variety description produced and published. Over time this will result in the build up a database to better identify potential comparators for such taxa. The intention is to place relevant procedures and information on the PBR website.

What constitutes a variety of common knowledge (vck) and how do you go about seeking to determine whether a variety is already commonly known?

There is no comprehensive definition of 'variety of common knowledge' although discussions in International Convention for the Protection of New Varieties of Plants (UPOV) continue to identify circumstances where common knowledge can be established. For example, the plain English meaning includes those situations where a variety is cultivated and marketed in the public domain. Other examples where a variety is considered a vck include: an application for PBR or the entering on an official register in any country; precise description in a publication; inclusion in a reference collection; and the existence of living material in publicly accessible plant collections. It is the responsibility of the Qualified Person, drawing on their expertise, and on available reference material, to compare the new variety with others. Determining whether a new variety is of common knowledge is not limited by geographic boundaries. Given that other countries do not publish material that facilitates such determination, there are reasonable limits as to how much can be done regarding global checks and normal risk management principles are applied. For example, if the existence of a similar variety became known after the grant of rights, there is always the possibility that PBR can be annulled. The Australian PBRO is leading International Convention for the Protection of New Varieties of Plants (UPOV) membership by publishing its descriptions on the PBR website.

What is the difference between a Part 1 and Part 2 application forms?

Part 1 is the initial application in which you provide general information and claims about your variety. It is used to establish a to establish a prima facie case that the variety exists, is distinct and meets the requirement of PBR. Part 2 provides a description of the variety and verifies the claims made in Part 1.

What is the role of DNA testing in relation to determining whether a plant is new?

DNA testing alone is not used for determining distinctness because, in the view of UPOV, insufficient DNA categorisation work has been undertaken. Nevertheless some courts have been prepared to rule on the basis of DNA test results in regard to infringement actions.

What parts of the application process commonly give rise to problems?

There are a number of common and easily avoidable problems: (1) Ensure that the applicant's name is correct (i.e. it is the exact legal entity to which PBR will be granted); all questions are answered, all attachments included and the form is signed. Meet requirements in a timely fashion, for example earliest lodgement of Part 2 and payment of relevant fee (2) Every effort should be made to minimise the possibility of objection. Once triggered, objections may take a long time to resolve. They are centred commonly on ownership disputes. (3) A 'prior sale'. Usually any exchange of goods for money constitutes a sale. However an exchange may be considered a 'sale' even if this is a barter deal. If you believe that a particular transaction should not be a 'sale' please contact the PBRO before the statutory expiration time to obtain a ruling. Research activities etc may be exempt but you must check. Expiration time: A sale of the variety in Australia must not have taken place prior to 12 months before lodgement of the application or the application will be ineligible. If the variety has been sold overseas then it cannot have been first sold more than six years ago if it is a tree or grapevine (Vitis vinifera), or more than four years ago for other plants. (4) Proof of distinctness is also a common problem. There is a clear need to provide the required information regarding, inter alia, differences between the new variety and the most similar varieties of common knowledge (ie its comparators).

When a new member takes on the obligations of UPOV, are varieties that have already been commercialised in that member country, beyond the limits allowable under International Convention for the Protection of New Varieties of Plants (UPOV), eligible for PBR?

No, generally speaking. However, there could be temporary exemptions. Normally if the variety has been commercialised beyond the allowable limits, such varieties should not be eligible for PBR. However, new UPOV members may choose to temporarily waive the time restrictions. This is a very rare exemption. When in doubt enquiries should be directed to the relevant country.

Rights

As PBR grantee, what are my rights under the Act?

Your right is to exclude others from doing certain specified acts in relation to the propagating material of a variety, ie, production, reproduction, conditioning, sale, import, exports and stocking of the material (see section 11 of the Act). In certain circumstances, such as where there has been unauthorised propagation and the grantee has not had a reasonable opportunity to exercise their right, harvested material or products made from the harvested material are covered by the same right as propagating material (see sections 14 and 15 of the Act).

Can the grantee prevent public access to the new variety?

No. Reasonable public access is guaranteed under the PBRA. This is a public interest provision (see sections 11, 16 and 19 of the Act).

Is it possible to be granted PBR in any variety?

No. You cannot be granted PBR in any variety, it has to meet the strict criteria of newness, distinctiveness, uniformity, stability and has a breeder. As newness implies, the variety cannot have been commercialised for longer than the prescribed period for the species.

Is the right to PBR available to all?

Yes, provided they are the breeder or legal owner of a new variety.

Once granted, how long do I have the PBR rights for?

The PBR right is yours for a period of twenty five years for trees and grapevines (Vitis vinifera) or twenty years for all other plants provided you pay the maintenance fee and obey any conditions that may be placed on the variety. For grants made under the previous Plant Variety Rights Act 1987 all varieties were protected for twenty years. Once PBR or PVR has expired, the variety reverts to the public domain and is available to everybody. The limited duration of PBR rights ensures a balance between private and public interest.

Under the PBRA do I, as a licensee, have the right to exclude others from activities that the grantee is empowered to exclude others from doing?

No. Only the grantee has the right to exclude others from doing the activities set out in section 11. A prudent licensee would seek a defence against the possibility of others performing the acts through an appropriate provision in the licensing agreement with the grantee.

What do I have to do to be granted a PBR right?

You must demonstrate that: you have bred, or discovered and selectively propagated the variety, or are the successor in title to the breeder; the new variety meets the criteria of distinctness, uniformity and stability; you have paid the relevant fees and filled in the official application forms. Breeding includes cross-pollination. Selective propagation is established where the population of the new variety is different from the population from which the 'discovered plant' originated.

The reason for PBR

Are there significant differences between the two Acts?

Yes, although the core principles, rights and obligations are the same. The Plant Breeder's Rights Act 1994 (PBRA) contains updated provisions reflecting changes in the 1978 and 1991 versions of the International Convention for the Protection of New Varieties of Plants (UPOV) on which the Acts are based. The changes relate to Essentially Derived Varieties, Derived Varieties, Farm Saved Seed, alternative dispute resolution, timing of fee payment, prior sale limitation, harvested material/products made from the harvested material.

When was the PBR program established?

It was first established under the Plant Variety Rights Act 1987 (PVRA), which was succeeded by the current Plant Breeder's Rights Act 1994 (PBRA)

Why have a PBR scheme?

1) to encourage plant breeding and innovation through the grant of a limited commercial monopoly to breeder's of new varieties. 2) to give innovators legal protection, without which anyone could commercialise the variety without recourse to the innovator.

Variety names

Can the name of my variety be, or include as part of the name, a trade mark registered under the Trade Marks Act 1995?

No. A trade mark cannot be, or be part of, the variety name. However, it is possible to use a trade mark in conjunction with a variety name, with the variety name having equal prominence. For example, it might be decided to market a range of varieties under the trade mark Elle. So that one might have Elle ‘Celebration’, Elle ‘Anniversary’ or Elle ‘Applause’ If a commercial name is registered as a trade mark it cannot be used as a variety name. If a plant is marketed under a trade mark without PBR protection, a purchaser may produce from the plant freely and sell the product provided they don’t use the trade mark.

Is it possible to change a variety name after grant?

No, generally speaking. Applications to change a granted variety’s name (denomination) are only accepted in very limited circumstances, for example, to correct an obvious mistake or where the name breaches legislation.

Last Updated: 15/9/2012

Meet Derek
Bachelor of Science (Physics - Hons)

Quality Improvement since 1985
Learn more about working with us