Update on Plant Breeder’s Rights in Australia
In Australia, exclusive commercial rights for plant varieties can be obtained under the Plant Breeder’s Rights Act 1994 (the PBR Act). Australian plant breeder’s rights extend for 20 years for most plants, and 25 years for some vines (including kiwifruit and grapevine) and trees. The PBR Act accords with international requirements for plant variety protection under the International Convention for the Protection of New Varieties of Plants (the UPOV Convention).
Commencing in early 2019, significant changes to the PBR Act occurred under the Intellectual Property Laws Amendment Act 2018 (the IP Amendment Act), serving to strengthen and clarify certain aspects of Australian PBR. Among the changes, provisions for additional damages, unjustified threats, exclusive licenses, and joint ownership were introduced. These changes bring Australian PBR provisions into closer alignment with corresponding provisions under the Patents Act 1990.
Additionally, important changes relating to ‘Essentially Derived Varieties’ (EDVs) were introduced. Prior to the IP Amendment Act, where a further registered plant variety was derived from a previously registered variety, and the further registered variety did not exhibit commercially important features differentiating it from the registered variety, the further registered variety could be designated an EDV and deemed covered by the previous PBR registration. Under the new provisions, a declaration can be sought to designate a further plant variety an EDV of a registered variety, regardless of whether the further plant variety is itself registered. These new provisions prevent parties from avoiding EDV designation of unregistered varieties with the same commercial characteristics derived from existing PBR registrations.
As for patents in Australia and most other jurisdictions, to maintain a PBR registration, annual renewal fees are payable. In the lead up to the IP Amendment Act, consultation occurred regarding extension of the ‘grace period’ after the due date within which PBR renewals can be validly paid. However, no such amendment was ultimately adopted. Accordingly, it is important to be aware that PBR renewals must be paid no later than thirty (30) days from the due date, to avoid lapsing of the registration. It is also worth noting that, under official fee changes announced very recently (https://www.ipaustralia.gov.au/about-us/public-consultations/fee-review-2019-2020/Fee-Changes-2020), annual PBR renewal fees have increased by A$55.
PBR registration can provide valuable protection for commercial plant material in Australia, and recent changes under the IP Amendment Act have served to strengthen and provide important clarification to Australian PBR legislation. Generally, it would be sensible to explore registration under the PBR Act for any new, stably reproducible plant line with commercial application in Australia. Notably, the Australian PBR Act allows for protection of not only crop and ornamental plants, but also fungi and algae. Additionally, both conventionally bred and genetically modified plant lines are eligible for PBR protection.
Tim Fitzgerald, head of IP Gateway’s life sciences team, is one of very few IP professionals with genuine technical expertise in plant science. Tim would be more than happy to answer any queries on Australian PBR, or IP protection of plants more generally.