Plant breeder’s rights fact sheet

What is a plant breeder’s right?

In Australia, the breeder of a new and distinct plant variety can register it under the Plant Breeder’s Rights Act 1994. Plant breeder’s rights (PBR) provide a monopoly for plant breeders of 20 or 25 years for trees and vines, giving them the exclusive right to the new plant variety. This exclusive right provides an opportunity for the breeder to capitalise on their investment in the research and development of the new variety.

What can be registered?

Only varieties that are ‘new’ or ‘recently exploited’ can be registered.

• A new variety is one that has not been sold with the breeder’s consent.
• A recently exploited variety is one that has been sold with the breeder’s consent, but not more than 12 months previously in Australia, or more than four years ago abroad (six years ago for trees and vines).

The new variety must be distinct from all other similar known varieties as well as uniform in its characteristics across the variety, and stable through generations. A variety is distinct if it is clearly distinguishable by one or more characteristics from any other variety whose existence is a matter of common knowledge at the time of application.

Uniformity means that a variety must be sufficiently consistent in those characteristics that make it distinct. In order to be stable, it must remain true to that description after repeated propagation or reproduction.

Why register?

Significant time and effort goes into the development of new plant varieties. Protecting and effectively exploiting your intellectual property (IP) through plant breeder’s rights can be a key aspect of maximising the long term value in your business.

There are many ways breeders can commercialise a PBR variety. A breeder may exclusively exploit a PBR themselves or can elect to licence or even sell the variety. Breeders can often derive a significant return on investment through upfront royalties on propagating material or an end-point or crop improvement royalty.

First exploitation

A plant variety will be taken to have been exploited from the date propagating or harvested material of the variety is sold to another person by, or with consent of, the breeder.

What is the scope of the breeder’s rights?

Obtaining PBRs gives the owner the exclusive right to do any of the following relating to propagating material of their variety:

• Produce or reproduce the material
• Condition the material for the purpose of propagation (e.g. treat seed)
• Offer for sale or sell the material
• Import or export the material
• Stock the material for any of these purposes.

In some instances, the rights extend to material harvested from the variety (e.g. its fruit or flowers), and products of the material (e.g. wine or olive oil).

What does ‘propagating material’ mean?

The primary rights conferred by PBR are in relation to ‘propagating material’. Propagating means any part or product from which, whether alone or in combination with other parts or products of that plant, another plant with the same essential characteristics can be produced.

Propagating material will include;

• Seeds.
• Bulbs.
• Rhizomes.
• Grafts
• Other types of reproductive material.

The nature of plant material and breeding technology means a variety can be propagated from a wide array of plant parts, including material such as cut blooms.

Qualified Person

A Qualified Person (QP) is an expert in a particular plant group, accredited by IP Australia to certify applications for plant breeder’s rights. QPs oversee the comparative trial and help provide evidence that a variety is distinct, uniform and stable.

There are two categories of QP:

• Consultant – QPs are accredited to act as consultants to PBR applicants and will advise applicants on the choice of comparative varieties, designs of the comparative trials, data collection and analysis, as well as the photography for and preparation of the detailed description.
• Non-consultant – QPs are accredited to certify applications for which they are the breeder, owner or authorised agent, or an employee of the breeder, owner or authorised agent.

PBR application process

In seeking protection for a plant variety in Australia, the variety must go through an administrative process that tests and evaluates whether the variety meets the requirements for registration. The application is split into two parts – formalities and description of variety.

Part one – Formalities

This deals with the formalities of the application. It sets out details of the applicant and the breeder, including:

• A photograph of the variety.
• An indication of how the variety is expected to meet the requires of distinctiveness, uniformity and stability (DUS).
• Proposed variety name.
• Details of any priority claim.
• Details of nominated QP.

As part of the application process, the applicant is required to conduct a comparative growing trial to demonstrate DUS for the variety. Once the formalities are completed, the application will be accepted and the plant variety will be provisionally protected, pending the successful completion of all requirements for registration.

Part two – Description of variety

This provides a detailed description of the variety following on from the results of the growing trial and/or information arising from a certified overseas test report, and present evidences of distinctiveness, uniformity and stability.

The part two description of the variety is generally completed by the QP who is also required to certify that the variety meets the criteria for registrability.

The description and photograph comparing the new variety with similar varieties is then published in Plant Varieties Journal, followed by a six month period for objection or comment. Upon successful completion of all the requirements, resolution of any objections and payment of the certificate fee, the plant variety will proceed to grant.

Can I protect my PBRs overseas?

PBRs are a national right, however Australia is a member of the International Union for the Protection of New Varieties of Plants (UPOV).

Many other countries, including all major industrial countries and our key trading partners, are members of UPOV and have a similar system for protecting new plant varieties. It may therefore be possible to register the variety overseas. In many cases, you are able to use the Australian application as the basis for another application in a UPOV member country if the application is made within 12 months.

UPOV member countries also offer special concessions for varieties that have been commercialised before the application is lodged. This is generally 12 months within the jurisdiction and can be up to four years for sales outside the jurisdiction (or six years for trees and grapevines). Not all countries are the same and consideration should be given to the requirements for international registration as early as possible.

Protection against copying

The ease with which new varieties can be propagated and copied can pose significant dangers for plant breeders. The commercial success of a new variety can depend on the effective protection against copying through PBRs which give owners the exclusive right to propagate the variety.

Related IP rights

Plant varieties can also be covered by other types of IP rights such as patents and trade marks. A new variety developed by genetic transformation may be protected by PBR, while the transformation technique, the gene, plant cells containing the gene, and the resulting plant variety itself might also be protected by patent.

A patent will protect any invention arising out of plant research and innovation, such as a new therapeutical or industrial use of the plant or an extract from it. Although the name of a plant variety cannot be registered as a trade mark, plant varieties can be marketed under a particular brand or trade mark.

We can work with plant breeders and researchers to develop the best strategy for protection, both domestically and internationally.

Non-propagation agreements

PBR legislation in Australia does not prescribe how the commercialisation of PBR varieties should occur, and in general, breeders seek to commercialise their varieties through contractual arrangements. For example, it is common practice for PBR owners to set the terms under which they allow a grower to use PBR protected material by way of a non-propagation agreement. These agreements may also set out the terms of any royalty payable in respect of the propagation of the protected variety.

Within the industry however, there are many different forms of non-propagation agreements, many of which are poorly drafted, or standard contracts which have not been updated for many years. Confusion as to the terms of any agreement can be a source of dispute between growers and PBR owners, with reports suggesting that disregard for the terms of non-propagation agreements is widespread in some industries.

Whilst disputes are not frequent within the industry, breaches of the agreement and/or infringement of a granted PBR can have significant consequences. One example of this is the decision in Zee Sweet Pty Ltd v Magnom Orchards Pty Ltd [2003] VSC 486, in which the Australian Federal Court ordered the respondent to destroy all its significant number of trees of the protected variety as a result of a breach of the Grower Agreement.

The Zee Sweet case continues to be a reminder that parties should understand their rights and obligations of any PBR related contracts. For breeders, it is important to regularly audit contractual arrangements to ensure they remain in force and relevant to their business. For growers, it is crucial that they properly understand the terms of any agreement or conditions by which they may grow protected varieties.

Genetic resource centre

Under PBR legislation in Australia, propagating material of the variety must be deposited at a Genetic Resource Centre (GRC), where germplasm material may be maintained. This is so the variety can be preserved for breeding and other testing.

Plant breeder’s rights are granted in a new plant variety. Unlike patent rights, validity and infringement are not assessed on the basis of the detailed description of the variety. This is because a variety’s phenotype will be affected by its environment, and as a consequence, a variety’s description is likely to differ between locations and time. While a variety’s distinctive essential characteristics should be reproducible in the same environment used for the distinctiveness, uniformity and stability trial carried out in support of the application and set out in the detailed description, it is important that access to a clear source of the protected variety be available in order to replicate or carry our new trials.