IP Australia : Plant Breeders Rights > Frequently Asked Questions

Before approaching the PBR Office with an enquiry regarding the Plant Breeder’s Rights Act 1994 (PBRA), this website should be examined carefully as it contains the answers to most queries.

The Reason for PBR

(1) To encourage plant breeding and innovation through the grant of a limited commercial monopoly to breeders of new varieties.

(2) To give innovators legal protection, without which anyone could commercialise the variety without recourse to the innovator.

The 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.

Accessibility and Rights

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.

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).

You have the opportunity to commercialise your variety either through a contractual arrangement with the person you choose, or, alternatively to commercialise the variety yourself (provided that there is no other legislation preventing you or the person you contract from undertaking the commercial activities).

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 payed 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. See the Report of the Expert Panel on Breeding for further information.

No. The PBR right is yours for a period of twenty five years for trees and vines 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 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.

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

Legal Issues

No. The Office will not provide legal advice. This should be sought independently. Most major law and Patent Attorney firms have competence in intellectual property matters.

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.

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. T his 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.

Yes. Seed may be kept for the producer to sow on their farm for their own usage. Subsequent seed (ie 2nd or later generations) or product from the later generations may not be sold/traded/bartered etc as propagating material without the grantees authorisation.

No. PBR coexists with other legislation. For example, dispute over the physical ownership of plants is an issue for common law proceedings in the courts. Intellectual property ownership is the basis of the PBR system. Neither would registration be automatically invalidated on the basis of a court decision relating to legal access to or ownership of the source population from which a new variety was derived. Intellectual property rights exist independent of physical property rights.

There is, of course, the possibility of voluntary undertakings linking physical ownership with intellectual property issues (so-called benefit sharing). However these undertakings are quite separate from the granting of PBR.

Similarly, other Australian legislation could impact on intended use of the registered variety. It is feasible for a new variety to be registered under the PBRA. However, as the PBRA coexists with other laws of the land, the commercialisation of the variety could be restricted by such legislation. For example, current legislation may prohibit the use of that variety in food, or, the growing of that variety because it is a noxious weed. Such matters are outside the scope of the PBRA and it is the responsibility of the applicant to take them into consideration and to act appropriately.

Grantees are also subject to national competition policy rules and should avoid activities that may be construed as unconscionable conduct or misuse of market power.

Any concerns in relation to the above jurisdictions should be made to the appropriate jurisdiction, and not to the Plant Breeder’s Rights Office.

Infringement

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 $55,000 for individuals and $275,000 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.

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.

Varieties Derived from Other Varieties

No. It is in the public interest, and the aim of the PBRA, that plant innovation is encouraged. Therefore further breeding based on PBR varieties is legal.

Does this mean someone can insert a gene in my PBR variety and gain PBR rights in the resulting variety?

Yes. Provided that the new variety is new, that is that it meets the criteria under the PBRA regarding distinctness, uniformity and stability.

There is provision, despite the granting of PBR in the resulting variety, for the grantee of the first variety to exert dual control, by applying for a declaration that the resultant variety is “essentially derived” from the first variety. It should be noted that no such declarations have been made to date.

Variety Names

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.

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

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.

Administrative Procedures

Yes. However, the expertise of a Qualified Person (QP) will be required in respect of certain aspects of the application process and many applicants use the services of a QP for the entire application because of the QP’s familiarity with the process. See the list of Qualified Persons . If you feel that you are suitably qualified then you may consider applying to the PBR Office to become accredited as a Qualified Person.

Initial assessment of an application costs $300. If the assessment is positive then provisional protection is provided for twelve months though this can be extended provided the variety is proceeding towards registration. Ongoing protection through “full” registration costs a further $1700 (though bulk discounts are available). Thereafter, an annual registration renewal fee of $300 is payable. See Fees

Breeding

The PBRA (section 5) defines breeding as including 'discovery' and 'selective propagation'. In normal circumstances, the 'discoverer' is the first to file for PBR protection. ‘Selective propagation’ is an outcome demonstrated by distinctness, uniformity and stability of the new variety when compared with the population/parents from which the new variety is derived. See the Report of the Expert Panel on Breeding for further information.

There is no simple statement that covers all situations. As a general rule of thumb a registrable variety has to be clearly distinct from all varieties of common knowledge by the expression of at least one characteristic that is genetically determined. In practice, varieties are considered on a case-by-case basis.

Commercialisation

What can I do if I discover a sport, which seems to be worth registering for PBR?

Lodge a Part 1 Application form with the PBR office (Part 1 Application) , thereby establishing your claim as owner. Or, decide to ‘test market’ first (maximum of 12 months), knowing that it is possible that another may lodge an application before you. Caution should be exercised if plant material of the variety is sold to anyone as strict time limits for eligibility apply.

The PBR right is essentially one of being able to exclude others from doing certain commercial acts. This in principle legal protection must be buttressed with a common law contract which would normally contain details regarding the amount, when and how the royalty is to be paid, etc.

Commercialisation of protected varieties and the level of returns are the responsibility of the grantee. This is usually accomplished through contracts and common law.

Questions from ‘Qualified Persons’ (QPs)

What constitutes a variety of common knowledge (vck) and how does one 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.

(1) Ensure that the applicant’s name is exactly 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.

(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) What constitutes ‘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 etc. 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. Further information can also be found at What Constitutes a sale under Plant Breeder’s Rights Act 1994?

(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).

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.

Part 1 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 Part1.

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.

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

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.

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 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.

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 (see links to UPOV members)

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.

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

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.

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.

Frequently Asked Questions about Plant Breeder’s Rights