Understanding plant breeder's rights

Are you developing a new plant variety? You may want to protect your intellectual property (IP) with a plant breeder's right (PBR).

What are plant breeder's rights?

A PBR gives you a commercial monopoly for a period of time. This encourages plant breeding and innovation, and means a large and growing pool of new plant varieties is freely available to anybody when the protection periods lapse.

In this webinar, we'll provide an overview of:

  • What PBRs are

  • What can be registered

  • The basics of applying

  • How to decide if a PBR is right for your business.

Understanding plant breeder's rights

Good afternoon everyone, and welcome to today's webinar, Understanding Plant Breeder’s Rights. My name is Laura Trentini, and I'm from the Strategic Communication team at IP Australia.

Before we begin, I'd like to start with a bit of housekeeping. A copy of today's slides is available for download from the control panel. We will have 10 minutes of Q&A at the end of the presentation, and we welcome you to submit your questions at any stage using the question box.

Now that housekeeping is out of the way, I'd like to introduce you to today's presenter, Andrew Hallinan. Andrew has been a PBR Examiner for five and a half years, and has been working in horticulture since the early 90s, working across most areas of amenity horticulture, and some production horticulture in Australia and the US. When you submit your plant breeder's rights application to IP Australia, the plant breeder's rights examiner are the people who look at your application and consider whether it meets requirements for registration under the Plant Breeder’s Rights Act. I'll hand over to Andrew, and we can get underway.

Beauty. Thanks, Laura. I do want to stress that it's not going to go into huge detail, but it should give you a good understanding of the process, and particularly if you're new to the system, should make it make some sense to you. So, anyway, we shall move on.

First of all, we're going to broadly talk about what intellectual property is. If you don't know, essentially it's protecting ideas, discoveries, et cetera, et cetera. Falls under two broad groupings. There's registered rights, which are all maintained or administered by IP Australia. There's patents, designs, trade marks and PBR, plant breeder’s rights, which is the subject of today's presentation.

Just for your information, there are other webinars about the other three rights on our website, if you wanted to have a look, because they do or can overlap with some of the stuff we do in PBR. Beyond that, there's unregistered rights like copyright, trade secrets, and circuit layouts.

Businesses should certainly be considering the use of IP in their operations. It has many benefits. Some are tangible, in terms of monetary benefit that you can see the return of royalties and increased flow of revenue. There's also an intangible side to that in that, depending on how you use your IP, you can develop your networks in growing your business. That might be through licensing arrangements and things. And you've then got further benefits of building relationships with other industry players. It also enables rights holders to defend their variety within the market, and stop people infringing on their rights. And it's also effectively a valuable marketing tool for promoting integrity and confidence in the business products, a form of branding, really.

There would also be reasons not to register. First of all would be the costs, whether or not you're going to make enough money out of the variety to warrant applying. You may choose to go down the avenue of other unregistered rights. And there's always open source or public varieties as a possibility, too. You might have a variety you think is of great value to everyone, and you don't want to make money off it, and just release it out for the public good.

To give you an idea of how IP can work together, we can look at a cup of coffee. A plant breeder's right could cover the variety of the coffee plant that the company makes its coffee from. Patents could cover how their coffee pod works. Designs could protect the appearance of the coffee pod, and trade marks could protect the logo that helps identify the brand of the coffee. Copyright could protect promotional materials like a pamphlet. Trade secrets could protect the secret blend of coffee beans that might go into a cup of coffee, and circuit layouts could protect the layout of the integrated circuit within the coffee machine.

But more importantly, getting back on the track, today we're going to talk about plant breeder's rights. Plant breeder's rights will give the breeder exclusive rights for up to 20 years in most cases, and 25 years in the case of trees and some types of vine, to reproduce and propagate plant material for commercial purposes, or license its propagation to the same end, to sell the plant material or license its sale, and import and export the plant material for commercial purposes. And it's really key to remember the licensing component of this. The protection is great, but it also gives you an opportunity to grow a business, and significantly increase revenue streams by licensing arrangements.

This leads into the next slide, which relates to UPOV. So the PBR system forms part of a greater international system, under the International Convention for the Protection of New Varieties of Plants, to which Australia is signatory, to the 1991 Convention. UPOV is the overarching umbrella organisation that sits in Geneva that helps administer it. Through UPOV you have the potential to market and license your varieties, and protect your varieties, in a whole host of other international countries. The point of UPOV is to try and harmonize how plant protection works around the world.

And as you can see from the map, a significant proportion of the world is signatory to the UPOV Convention, and therefore you have the potential to access these markets, albeit with a proviso that you would have to seek protection in each individual country, because each individual country will have its own legislation. But suddenly grows the market from having 25 million in Australia to a billion, if you look at the totality of that, so worthwhile considering.

PBR, all sorts of plants can be registered for PBR. It could be things such as shrubs and trees, as well as flowering and fruiting and agricultural crops, but certainly not limited to those. Algae and fungi can also be protected.

And I'm going to have to get a bit technical here. I would imagine most plant people listening will know what a plant variety is, but to define a plant variety, it's a plant grouping within a single botanic taxon of the lowest known rank, which grouping can be, number one, defined by the expression of the characteristics resulting from a given genotype or combination of genotypes. Number two, distinguished from any other plant grouping by the expression of at least one of the said characteristics. And three, considered as a unit with regard to suitability for being propagated unchanged.

Now, unfortunately, I know that's very technical, but as I say, I think most people that know about plants should know what a what a variety is. And yeah, as I say, particularly number three, it does need to be reproducible.

We have some fairly simplified examples of what varieties might be. Species one is obviously a group of apples. From that group of apples we can group them into varieties. In this case, judging from the fruit color. We have, in species two, a group of very pretty flowers, and much the same in that case, while in species three is lettuce, and lettuces can also be sub-categorised into different varietals due to phenotypic expressions of their genotype.

So, to determine if a plant variety is registrable, it must have a breeder, the variety must be novel or new. So essentially, that means the variety cannot have been commercially exploited, or only recently commercially exploited. The variety must be distinct in key characteristics, and must be uniform in those characteristics, and is also stable and able to be reproduced.

In order to determine novelty, novelty is basically determined in PBR by prior sale. So if the plant variety has not being sold with the breeder's consent, then it's considered novel. If the plant variety has been sold within the last 12 months in Australia, it's considered novel. If the plant variety has been sold overseas within the last four years, for most plants, it's considered novel. Or, if the plant is a tree or a vine, or certain types of vines, it's allowed to have been sold within the last six years and still be considered novel. Plant varieties that were sold outside those timeframes are no longer considered novel.

So these are an important factor to consider for two reasons. A, you are allowed to sell a plant prior to applying for PBR, so it might give you a chance to test the market and see if it's viable as a product. But at the same time, you need to remember that these timeframes exist, because if you let it run too long, the variety will be ineligible.

The other ways that we look at whether a plant variety is eligible, is whether it's distinct, uniform and stable. So for this, we'll go back to the UPOV Convention itself, and define how distinct, uniform and stable work. For distinctness, the variety shall be deemed to be distinct if it is clearly distinguishable from any other variety whose existence is a matter of common knowledge at the time of filing the application. So, essentially, we want something that is unique.

It must be uniform. And in terms of uniformity, the variety shall be deemed to be uniform if, subject to variation that may be expected from the particular features of its propagation, it is sufficiently uniform in its relevant characteristics. So that specifically relates back to the distinctness.

And thirdly, it needs to be stable. So the variety shall be deemed to be stable if its relevant characteristics remain unchanged after repeated propagation, or in the case of a particular cycle of propagation, at the end of each such cycle. So you need to be able to produce multiple generations that remain stable for it to be considered a variety.

In order to apply for PBR, it's a two-part process. So the initial part is called the Part 1. Now the Part 1 essentially sets out... It's an initial assessment of whether or not a plant variety might be eligible. So in the Part 1 application we look at the formalities, so we're looking at information about the applicant, the agent, the breeder. We get preliminary information about the variety and its breeding history. We also have a proposed varietal name. Now, it's important to remember that varieties must have a name as well. We also get a nomination of a qualified person, which we'll go into a little bit further down the track.

And once the Part 1 is accepted, provided it's met all the criteria at this stage, you'll receive provisional protection. So, provisional protection, it's important to note, you can't take infringement action from, but upon grant, if it goes through the second stage of the process, you can then retrospectively take infringement action from it. Now that's important because once you receive provisional production you can also notify people that the plant is protected.

So, a very important step in this, if you're new to PBR, is the qualified person. So it's really important to note that all applications for plant breeder's rights require a QP, or a qualified person. QPs are accredited experts in particular plant types, and they perform a very important role in each application. At a minimum, under the legislation, they're required to supervise a growing trial, verify the claims made by the breeder and the applicant, and certify the application. QPs may well undertake other tasks in an application as well, and that's something that would be, it would vary from QP to QP, and application to application.

Once we've had our application accepted through the Part 1, we then commence the Part 2 of the application. So the Part 2 application is comprised of a growing trial, so the growing trial is where we test whether a plant variety is distinct, uniform and stable. From that growing trial, we'll develop... well, the QP, in conjunction with the applicant and the Plant Breeder's Rights Office, will develop a detailed description. The detailed description will then get published in the Plant Varieties Journal, which is published four times a year, and instigates a public notification period.

There's then a requirement for submission of further Part 2 documentation, which is certification documents and other things, and there's the payment of relevant fees. If all this passes through successfully, the plant will be eligible for grant of PBR.

So probably the most important component of this is the growing trial, where we're testing the plants, whether the plant's distinct, uniform and stable. The applicant and QP, in conjunction with the PBR Office, will agree to what varieties to compare to in the trial. But it's really important that it must include the varieties of common knowledge that are most similar to the candidate variety. So the way we determine whether a variety is different is to compare it to the most similar other known varieties that we can. And if we can distinguish it from those, then it must be a new variety, or that's the methodology.

QPs collect data from the DUS trial, so the DUS trial is the growing trial, at different growth stages, and develop a description and submit this description based off this data. This trial, and the data, will then be looked at by an examiner from IP Australia to confirm whether or not the claims meet the criteria. And if so, the detailed description is then completed.

It's important to note, too, that in some instances, we can use a detailed description that was based off a DUS growing trial overseas, and a relevant report the relevant authority in that country. So this is where this UPOV linkages come in. Whether or not a variety will be looked at this way will depend on a number of factors, though. The point of the detailed description is to provide detailed information about the variety and, in particular, its distinctiveness, uniformity and stability.

This is then published in the Plant Varieties Journal, which is published four times a year, roughly quarterly, not quite sometimes. And this instigates the six-month public notification period. The public notification period is really, really important to know about, because that's when it's available for everyone to see. And it allows the public and interested parties to make comments and possibly object about an application. So it could well be there's people out there that know about something that has been missed, and let us know. So it's a really good checkpoint for us to correct things.

If we do receive comments and formal objections, depending on the veracity of the comment or the objection, it could lead to retrials, or rejection of the application. Conversely, too, it may still allow the variety to go through.

Once the public notification period is over, after the six-month period, and there haven't been any comments or objections that have made it have to be re-looked at, the variety is ready for grant, or ready to be looked at for grant.

So at this stage, the remainder of the relevant fees need to be paid, and all the Part 2 documentation certified and submitted. There can be a number of other minor formalities to be looked at, but once that's all been completed, the PBR can be granted for the variety, and the grant protection starts.

Broadly speaking, timeframes involved can range quite a bit. So obviously, the first thing, from an applicant's point of view you need to consider is the prior sale issues. So you need to make sure that you get the Part 1 in, in time.

Once the Part 1's received, examination and acceptance of that application is usually within two or three months. Sometimes it's very fast, sometimes it can blow out, depending on requirements. Once the variety is accepted, the growing trial needs to be undertaken, or an assessment of an overseas test report. Depending on the plant type, and the circumstances, this can realistically take between one and six years. Some plant types are very easy to see rapidly, but some things, such as fruit trees, a trial can take four to five years, minimum, before we can actually look at it.

After that, detailed description shouldn't take much longer than three months to be published. And the commencement of the public notification period begins, which is six months. Grant usually takes between one and two months after that point. There is another point at this point... Sorry, I will try and say that again, poor choice of words. There is one more step here where the grant is then published in the Plant Varieties Journal as well. So that will occur within three months, depending on when the next Journal is published.

The fees involved, from an IP Australia perspective. The initial application fee is generally $345 for people planning online. You don't have to pay online, but you do pay a little bit more, so $545 if you wanted to send a cheque in, or some other means. The big fee we have is the examination fee, and that covers basically the Part 2 phase, and covers fees for, the expenses for examiners to go and visit trials and things. And that's $1,610 currently.

Once that phase is successfully passed, then the certificate fee is due, and the certificate fee is essentially the grant fee, and it's $345. And from that point onwards, currently the renewal fees are $400 a year online, or $450 through other means. Important to note that these fees are actually spread out. They're not something that's all due at once.

The additional costs that you'll need to consider with a PBR application principally revolve around QP fees and trial costs. These are going to vary quite wildly from QP to QP, but also because of the plant types, and possible other costs around trials, so it's a bit hard to predict what they would be.

So, in summary, PBR is a great way of protecting your new plant variety. It's a two-stage process. The initial case, in the Part 1, where we determine whether or not it's eligible for a further look. Once you pass this, as I say, you'll be eligible for provisional protection.

The Part 2 is the next stage, which involves the growing trial, and the publication of the detailed description. And once that's successfully crossed, and all the relevant documents and fees are paid, it leads to grant. From grant, you're looking at 20 to 25 years of potential protection. And the average time for registration is about two and a half years to achieve this. As I say, though, in some cases it might be longer, depending on the plant type.

Once granted, you can use the symbol, the PBR symbol, for registration, and it essentially warns people that your plant variety is PBR registered. It's an Australia-wide right, and it's important to consider too that, potentially, it could be used internationally in other markets as well. Once again, on the proviso that you do consider that you will need to apply for the right in other countries.

So, if you've got a variety, or are considering looking at PBR, you'll need to think about whether or not your variety is new, distinct, uniform and stable. Is it commercially viable and worthwhile, worth the cost of protecting it? The other thing you'll have to consider down the track, is also, if you are going to undertake enforcement action, is it worth the costs of that enforcement? And have you considered some of the other options?

At the end of the presentation, we've just basically got a list of some of the resources that are available online. On our internet page we have a whole section devoted to PBR. There's also a directory for qualified persons. So if you're considering a PBR, as I say, you do need to nominate a QP, so there's a whole list of relevant QPs on there that you can look through. Yeah, and then we have some more, some generic information about IP in general. So, I think that pretty much wraps it up.

Thanks, Andrew. So that brings us to the end of our main presentation, and onto our Q&A session. If you haven't asked a question yet, but want to, please ask now in the question box. We'll give you a few minutes to submit your questions.

While we're waiting for some more questions to come through, I'll let you know that we're redesigning our website content to make it easier for you to apply for a PBR. If you'd like to help us by testing our new content, please let us know in the post-webinar survey response. Also, today's session will be recorded, so if there are any particular parts of the presentation you'd like to come back to at your own time, the recording will be on our website soon. And while you're on our website, you can also see that we have a variety of other webinars on IP topics.

We're going to take a few minutes now to review the questions, and come back to you. We'll be back shortly.

Okay, thank you for all your questions. Let's start with one about qualified persons. I guess this is a two-phase one. Can anyone apply or register to be a qualified person, and what is involved? And can a person be both breeder and a QP?

Yeah, thanks Laura. Yeah, look, anyone can certainly apply to be a qualified person. The process involved is basically submitting the application, pardon me, to IP Australia. It'll be assessed based on certain criteria. There is a part of the website that describes this. And there's certainly no reason why the breeder can't be the QP. So, yes, yes and yes.

Okay. Our next question is, is there any requirement for overseas DSU reports? Is there a timeframe, for example, report within five years?

I can't give a simple answer to this, it depends. We do prefer overseas test reports to be relatively recent, but there could be circumstances where something, something beyond five years might be necessary to look at. I can't really tell you much more than that.

Okay, thanks. Next question is, must the characteristics for satisfying the distinct requirement to be physical and visible? What about intrinsic functionality characteristics?

I suppose there's two answers I could... well, two stages to the answer I can give here. Depending on what we're talking about, it could be worthwhile looking at the TGs on the UPOV website. This relates to a couple of other questions that have come in, too, to some degree. On the UPOV website for... It doesn't apply to all plant types, but we do have technical guidelines we work to, and that sets out groups of characteristics that we should look at, we're not limited to that.

Intrinsic functionality, I suppose it would depend. Certainly disease resistance is something we do look at on a regular basis. I suppose it's not entirely restricted to physical and visible, but it would depend, without knowing more detail. Certainly things like disease resistance is something that we would look at as well.

Okay, next question. Are the 20 years or 25 years of protection continued from the actual grant of the PBR, or retrospectively from the initial point of filing an application once the PBR has been granted?

Yeah, so the grant of PBR, the 20 or 25 years, begin at the date of grant. So, not from the initial filing.

Another question here. How do we access what the characteristics criteria is without having to go through an application process?

Yeah, so this one relates to the previous question we had about satisfying distinctness. A good place to look, depending on the plant type, is the UPOV guidelines, the technical guidelines on the UPOV website. We can send this out to you.

So if the type of plant that you're looking at has a TG, that gives you a really, really good idea of the sorts of things that we do look at. But it's important to remember that we don't just look at what's in TGs. The purpose of breeding is quite often pushing the limits of what's already existing out there, so it does happen from time to time where we have things where the TGs don't cover that particular characteristic. And if it's different in another way, then that's fine, as long as we can verify that that's the case.

So I suppose this would be my advice too, is that if you're a plant breeder, observe your plant, and have a look, because quite often we'll get applications where the breeders aren't fully sure of how... They know the plant's different, but they don't know how. So have a look at it in a slightly different eye, and then work out where it is different. And that's perfectly acceptable.

Great. Well, that's all the questions we can get through today. If we didn't get to your questions, we will be in touch within the coming days to respond to you. Thanks so much for explaining plant breeder's rights today, Andrew, and for answering the questions. And thanks for everyone attending. We hope you enjoyed the webinar.

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