In Australia, new plant varieties can be protected by both Plant Breeder’s Rights (PBR) and patents. The form of protection which is most appropriate for a given plant variety will require a consideration of the rights provided by each, and the requirements that must be met to obtain them.
Why protect plants in Australia
Agriculture is recognised by the Australian government as being one of the “five pillars” of the national economy. In 2013-14 Australian farm production was valued at just over $50 billion, with the largest contribution coming from wheat.1
The majority of Australia’s agricultural output is exported. Our unique global position allows counter seasonal supply to northern hemisphere markets and our proximity to Asia enables us to capitalise on the market demands of the growing Asian middle class. Indeed, in response to growing demand from Asia, the Australian Government has set an ambitious goal of doubling Australia’s agricultural output by 2030.2 Strengthening this push is the recently announced free-trade agreement with China, which will see a significant reduction of tariffs for Australian produce.
The Australian plant breeding industry has seen dramatic developments over the last 15 years, from one which was predominately government funded to one which is almost entirely privatised. Over the same period, major investments have been made in Australia by multinational companies such as BASF Plant Science, Monsanto, Dow AgroSciences, Pioneer Hi-Bred, Syngenta and Bayer CropScience. Not surprisingly, therefore, there has been a rapid increase in IP rights being sought for new plant varieties.
The figures below provide a general overview of the major applicants for Australian patents in the field of plant science (IPC code A10H) and the most common words found in the abstracts of these patents in January 2015.
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AU patent applicants
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IP rights for new plant varieties
The two main options available for protecting new plant varieties in Australia are patents and PBR. Other commercially useful forms of protection include trade marks, copyright and contracts. This article provides a brief overview of the requirements for patenting and obtaining PBR for new plant varieties in Australia.
A. Plant Breeder's Rights
Statutory protection of plant varieties is provided by the Plant Breeder’s Rights Act 1994 (Cth) (“PBR Act”), which was implemented in accordance with Australia’s obligations underInternational Convention for the Protection of New Varieties of Plants of 1991 (“UPOV Convention”).
Plant varieties may be protected under the PBR Act if:
- the variety is distinct from any other variety whose existence is a matter of common general knowledge;
- the variety is uniform; and
- the relevant traits remain unchanged after repeated propagation.
The protection afforded by PBR relates primarily to propagating material and includes the exclusive rights to:
- produce or reproduce the material;
- condition the material for the purpose of propagation;
- offer the material for sale;
- sell the material;
- import the material;
- export the material; and
- stock the material for any of the preceding purposes.
However, certain uses of the propagating material are exempt from infringement including the use of the propagating material for private and non-commercial purposes, for experimental purposes and for further breeding (”breeder’s exemption”). Another important exemption, known as the “farm-saved seed exemption”, allows farmers who have legitimately obtained PBR-protected material to further propagate the material for the purposes of planting a new crop.
The farm-saved seed exemption is a disincentive to plant breeding but is nonetheless implemented by many signatories of the UPOV Convention, including Australia. The limitations of this exception are, to a certain degree, mitigated in Australia by our end-point royalty (“EPR”) system, which requires the payment of royalties at the first point of sale of material harvested from protected varieties. Compared to the seed-point royalty system found in many other countries, the EPR system is credited as being a more equitable form of compensation, as it involves a sharing of risk between the breeder and the grower. However, the EPR system contains many inefficiencies resulting from transactions between entities that are liable under the PBR Act and entities that are not.
Notwithstanding the above limitations, PBR continue to provide a necessary and valuable form of protection for many new plant varieties in Australia. For more information about PBR and how to apply for PBR in Australia, click here (http://www.shelstonip.com/services_plant.asp).
In addition to avoiding the breeder’s exemption and the farm-saved seed exemption, patents offer broader protection for plants than PBR. Patent claims may be directed not just to propagating material, but also to other parts of the plant and, of course, to the entire plant itself. Importantly, claims can also cover methods of producing the plant and the use of the plant.
Patent law in Australia differs from that of the US and Europe, with the overall effect that protection for plant varieties in Australia is more liberal than in those jurisdictions. Some of the differences are discussed below.
Patentable subject matter
In the landmark decision of NRDC v Commissioner of Patents of 1959 (102 CLR 252), it was held that patentable subject matter could be defined as that which results in “an artificially created state of affairs” and which provides “an economically useful result”. The effect of this decision is to define patentable subject matter in a manner which can be adapted to new technology as it develops. Importantly, this definition also means that biological material, including plants, represents patentable subject matter. More recently, the Australian courts confirmed that there is “no intrinsic impediment to the patentability of plant varieties” (Grain Pool of Western Australia v Commonwealth of Australia (2000) 202 CLR 479).
Plants are also eligible for patent protection in the US, although this may change following a recent decision by the US Supreme Court3. In the equivalent Australian case, the enlarged bench of the Full Federal Court of Australia unanimously held that genetic material represents patentable subject matter, confirming Australia’s position that there is no inherent restriction to the patenting of biological material.
Unlike Europe, where plant varieties are excluded from patent protection (although plants per se are not excluded), Australia does not exclude claims directed to a new plant variety. Further, Australia allows claims to “essentially biological processes” for the production of plant varieties. Consequently, an Australian standard patent may include claims directed to a plant variety, a plant per se and a method for its production.
The standard for establishing an inventive step is significantly lower in Australia compared to Europe and the US. The case law in Australia requires that the prior art “directly lead” the skilled person as a matter of course to pursue one avenue in the expectation that it might well produce the claimed invention. In contrast, the European test, which has also been applied in the United States, is whether the invention would have been “obvious to try” with a reasonable expectation of success. As noted by the Intellectual Property Office of Australia4, the “obvious to try” approach sets a higher threshold for inventive step as it permits a greater level of routine testing and the combination of approaches in order to solve a particular problem. Furthermore, it remains the case in Australia that only a “scintilla” of inventiveness is required to satisfy the requirements for inventive step.
Assuming that plant breeding methods are inherently non-inventive is a mistake that has led many to believe PBR are the only form of protection applicable to a “conventionally bred” plant variety. Although there is no case law in Australia specifically dealing with the issues of plant breeding and inventive step, it is clear that conventionally bred plants can meet the requirements of inventive step in Australia. Common indicators of an inventive step in plant breeding are a new and unexpected result or the use of breeding methodologies that extend beyond routine experimentation.
Official fees associated with patenting are about 1.25 times greater than those for PBR protection over a 20-year term. Of course the costs associated with obtaining patent protection will increase where prosecution is extended and more attorney time is required. On the other hand, the costs associated with PBR applications can also increase, for example where field trials are required.
With the rapid emergence of new technologies and the growing demand for Australian produce from our Asian neighbours, IP is certain to play an increasingly important role in protecting agricultural innovation in Australia. PBR and patents are both commercially valuable assets for maximising the return on investment made in developing new plant varieties.
The somewhat lower level of protection afforded by PBR aims to account for the often lower levels of inventiveness that plant breeding involves. However, it does not follow that a plant variety which meets the statutory requirements for protection under the PBR Act is prohibited from patent protection. As discussed above, there is no intrinsic bar to patentability for inventions relating to plants. Rather, plants are subject to the same patentability requirements as an invention from any other field of technology. Accordingly, it is well worth considering both types of protection in Australia as a patent affords broader protection while PBR may be less vulnerable to an invalidity challenge. Both forms of protection last for 20 years (or 25 years in the case of PBR for trees or vines).