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ACIP review of enforcement of Plant Breeder's Rights
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ACIP review of enforcement of Plant Breeder's Rights

In brief: Partner Dr Trevor Davies (view CV) and Law Graduate Matt Vitins provide an outline of the recent Issues Paper released by the Advisory Council on Intellectual Property on its review of the enforcement of Plant Breeder's Rights in Australia.

Introduction
Background
ACIP Issues Paper
Review Process

Introduction

The rights of plant breeders have been specifically protected in Australia since the introduction of the Plant Variety Rights Act 1987 (Cth). This Act evolved to bring Australian law in line with international agreements and became the current Plant Breeder's Rights Act 1994 (Cth) (the PBR Act)

In 2002, the PBR Act was the subject of a series of amendments designed to clarify plant breeder's rights and to improve access to the PBR Scheme.¹ However, concerns relating to enforcement of PBR persisted. In 2006, Parliamentary Secretary for the Minister for Industry, Tourism and Recourses, Bob Baldwin, requested The Advisory Council on Intellectual Property (ACIP) report to the Federal Government on:

...possible strategies to assist Australian plant breeder's rights holders effectively enforce valid rights...(and) whether any practices and procedures relating to the enforcement of Plant Breeder's Rights are appropriate to be referred to the Federal Magistrates Court²

In response to this request, ACIP has recently released an Issues Paper – A Review of the Enforcement of Plant Breeder's Rights.³ The purpose of the paper is to elicit submissions that will form the basis of further consultations and an options paper. The options paper will be open to further comment before a final report is delivered to the Parliamentary Secretary in late 2007.

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Background

Objectives

The primary objective of the PBR Act is to enable plant breeders to apply for and receive proprietary rights for new varieties of plants they develop. In short, it is 'fundamentally aimed at ensuring that plant breeders have an opportunity to gain reward for their innovation'.⁴

Protecting these rights in conformity with the International Convention for the Protection of New Varieties of Plants (the UPOV Convention) and the World Trade Organisation Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) allows for reciprocal rights recognition and thus international enforcement. In turn, this provides access to international markets and to overseas protected varieties.

The PBR Act is thus thought to generally underwrite innovation and the competitiveness of Australian agriculture.

Plant Breeder's Rights

Plant Breeder's Rights are granted upon application to the Plant Breeder's Rights Office through IP Australia following an examination process. For a plant variety to be registrable, section 43(1) of the PBR Act requires:

that the variety has a breeder;
that the plant variety be distinct, uniform and stable; and
the variety has not been exploited, or has only recently been exploited.

The actual rights conferred by a successful PBR application are detailed in s11 of the PBR Act, which provides:

...PBR in a plant variety is the exclusive right, subject to this Act, to do, or to licence another person to do, the following acts in relation to propagating material of the variety:

produce or reproduce the material;
condition the material for the purpose of propagation;
offer the material for sale;
sell the material
export the material
stock the material for the purposes described (above)

PBR rights are granted for 20 years for plants, and 25 years for tree or vine varieties.⁵

Exceptions and limitations

ACIP identifies two exceptions under the PBR Act as particularly important.⁶ The first is the possible use of protected plant varieties for non-commercial purposes and for experimentation or use in breeding other varieties (s16).

The other is referred to as the 'farm-saved seed exemption', which exists under s17 and allows farmers to harvest propagating material derived from the crop grown from the original, legitimately obtained propagating material, and use it for subsequent cropping cycles on their own farm.

A further important limitation is found in s23 which states that PBR rights are exhausted after propagating material is sold by the grantee or with the grantee's consent.

Inter-generational PBR

Irrespective of the exceptions and limitations noted above, PBR can extend through subsequent generations of a protected plant variety. Where propagating material is reproduced without the authorisation of the grantee, and material is harvested from that propagating material, s14 extends PBR rights to the harvested material where the grantee has not had a 'reasonable opportunity' to exercise their rights in relation to the propagating material. Section 15 extends PBR to 'products obtained from harvested materials' on similar conditions.

The interaction between these provisions has been somewhat clarified by case law. ACIP cites Cultivaust Pty Ltd v Grain Pool⁷ as authority for the propositions that:

the authorised sale of the initial seed does not exclude from the operation of PBR all subsequent generations of crop from seed originally purchased from the grantee; and
exhaustion of PBR by the sale of initial seed applies to the first generation only.⁸

While acting as an exception to these principles, the effect of the farm-saved seed provisions are that PBR rights remain in tact. Royalties may be demanded where a farmer sells, exchanges, shares or barters harvested material to another grower without the further authorisation of the grantee.⁹

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ACIP Issues Paper

The ACIP Issues Paper identifies a number of areas of concern related to the enforcement of PBR rights. The discussion in the Issues Paper can be organised according to suggestions that address the PBR rights as they are currently framed; procedural reforms; and cultural change.

ACIP seek views on the following issues.

Matters concerning the PBR Act

The operation of the farm-saved seed provisions and 'reasonable opportunity' under s14 and s15;
procedures relating to the declaration of Essentially Derived Varieties;
process and mechanisms for protecting PBR; and
lack of clarity in the language used in PBR Act;

Procedural

It is noted that the resources required to undertake legal action for infringement are often well beyond the means of most breeders.¹⁰ A possible solution raised in the Issues Paper is to direct PBR matters to the Federal Magistrates Court (FMC) in preference to the (more expensive) Federal Court. ACIP asserts that using the FMC to deal with less complex cases would mean a better use of judicial resources and reduced cost to litigants.¹¹

Submissions are sought on preliminary suggestions either received or raised by ACIP, including:

the FMC and PBR;
provisions in the PBR Act to allow entry onto private property to gain evidence (and on evidence collection generally);
mving the burden of proof in litigation from the plaintiff to the defendant;
the inclusion of exemplary damages provisions in the PBR Act;
criminal sanctions for PBR infringement as opposed to civil sanctions;
provisions for either compulsory or voluntary alternative dispute resolution;
a system of customs border seizure for goods that allegedly infringe PBR rights;
random varietal determination testing to act as a deterrent to mis-declaration; and
varietal identification and End Point Royalties.

Central information and a collective peak body

A factor inhibiting enforcement is that PBR rights are not well understood. ACIP writes:

The PBR Act is still relatively young in Australia and that there has been inadequate awareness by the community in general (and the farming community in particular) of the nature of the rights conferred, and the obligations that are a consequence of using PBR protected plant varieties.¹²

A further cultural issue identified by ACIP is that in small rural communities breeders are often reluctant to take infringement action when the infringer is also a customer of the breeder.¹³

For these reasons among others, ACIP canvasses the prospect of establishing a peak body to represent breeders' interests. The role of the peak body could potentially involve:

increasing awareness through educating both breeders and users;
undertaking enforcement activities on behalf of members; and
collecting PBR royalties.

The second of these functions could be particularly useful in that a peak body responsible for enforcing PBR rights would spread the cost of enforcement across its members. It would also overcome the issue regarding the politics of enforcement in small rural communities.

Questions raised by ACIP as to the ultimate form of any such peak body include:

whether the organisation should be statutory or independent;
whether membership should be compulsory or voluntary;
whether it should enforce grantees rights; and
whether an educational role should be an integral function of the body.

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Review Process

Written comments on the Issues Paper are sought by 27 April 2007 and can be sent to the ACIP Secretariat. Details of the review and Issues Paper can be found at http://www.acip.gov.au/

For further information please contact Dr Trevor Davies on 02 9230 4007

Footnotes

Explanator y Memorandum to the Plant Breeder's Rights Amendment Act 2002 (Cth).
Terms of Reference as cited in Advisory Council on Intellectual Property (ACIP), A Review of Enforcement of Plant Breeder's Rights (2007) at 1.
Available at http://www.acip.gov.au/.
Explanatory Memorandum to the Plant Breeder's Rights Amendment Act 2002 (Cth).
PBR Act s22.
ACIP above n2 at 8 (ACIP terms of reference).
[2005] FCAFC 223.
ACIP above n2 at 10.
Ibid at 17.
Ibid at 19.
Ibid at 19.
Ibid a t 13.
Ibid at 29.

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