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 distinct 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 two people may have rights to the second variety; and neither can exploit the rights without authorisation from the other. Accordingly the rights holders need to agree to conditions of commercialisation.
Australia was the first country to draft its PBR law to international standards. Our 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 principle features, performance or value of the variety.’ These features differ depending on the specific plant and its commercial context. For example, another colour can differ substantially in wheat varieties but provides no known commercial advantage. Similar 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 places the onus on the breeder of the second variety to rebut the claims of the first breeder.
A variety cannot be declared an EDV whenever 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 a couple of other administrative provisions that apply before something can be declared an essentially derived variety. Both the initial registered variety and the newer disputed variety cannot be owned by the same breeder. Also, the older variety must be registered, while the newer disputed variety must be either granted PBR registration or be the subject of a current application.
For example, MC 51 is a type of apple discovered as a full tree mutation in an otherwise uniform plantation of MC 38. The initial variety MC38 has a more consistent red colour compared with MC51.
An applicant applied to have MC 51 declared an essentially derived variety of MC 38. The EDV application was first assessed against the administrative provisions outlined in section 40(1) of the PBR Act.
- a person is the grantee of PBR in a particular plant variety-(the initial variety); and
- another person is the grantee of, or has applied for, PBR in another plant variety (the second variety); […] the grantee of PBR in the initial variety may make written application[…] for a declaration that the second variety is so derived.
We rejected the EDV application for MC 51 because:
- ‘another person’ was not involved as is required by section 40(1)(b), and
- there was no evidence of an Australian application for, or a grant of, PBR for MC 51.