The Plant Breeder's Rights Act 1994 (PBR Act) extends protection of registered varieties to ‘essentially derived varieties’ (EDV). Essentially derived varieties share all the essential characteristics of a registered plant variety but are clearly distinguishable and qualify for plant breeder’s rights (PBR) registration in their own right. The owner of the initial registered variety can ask us to declare the latter variety as essentially derived.
Rights to the essentially derived varieties fall within the scope of the initial variety. This means more than one person may have rights to the second variety; and the grantees cannot exploit the rights without authorisation from each other. Accordingly the grantees need to agree to conditions of commercialisation.
The PBR Act has three important clarifications in regard to essentially derived varieties.
The PBR Act:
- defines essential characteristics
- specifies what is not an EDV and how the ‘EDV chain’ is broken
- states that the national authority administers EDV.
The PBR Act defines essential characteristics as ‘heritable traits that contribute to the principal features, performance or value of the variety.’ These features differ depending on the specific plant and its commercial context. For example, anther colour can differ substantially in wheat varieties but provide no known commercial advantage. However, colour differences in flowers, such as the Calla Lily, have huge commercial implications.
We are responsible for declarations of EDV (court actions are not required in the first instance). The PBR Act and associated PBR Regulations provide the administrative procedure for breeders to apply for a variety to be declared essentially derived.
A variety cannot be declared an EDV if it contains an important characteristic which differentiates it from the initial variety and adds to the performance or value of the variety.
For example, shorter internode length in turf grass has been accepted as an important characteristic because it increases thatch and therefore resistance to wear.
There are other administrative provisions that must be met before a variety can be declared an essentially derived variety. Both the initial registered variety and the newer disputed variety cannot be owned by the same breeder. The older variety must also be a registered PBR.
Recent changes to the PBR Act by the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 have provided a new administrative procedure for PBR owners to follow if the second variety is not registered. As a result, there are now two separate administrative procedures that can be followed to seek an EDV declaration, depending on whether the newer variety is registered (or subject to a current application) or not.