Recent amendments to the PBR Act have strengthened PBR rights and have aligned aspects of PBR with other intellectual property laws in Australia.
This article summarises the changes.
The Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Act 2018 (Cth) (Amending Act) received Royal Assent on 24 August 2018 and makes significant changes to the Plant Breeder’s Rights Act 1994 (Cth) (PBR Act).
The most recent changes to the PBR Act came into effect on 24 February 2019. Key changes include amendments permitting additional damages for infringement and new provisions dealing with unjustified threats of infringement, exclusive licences and joint ownership.
In perhaps the most significant change, the PBR Act now permits the Federal Court and Federal Circuit Court to award additional damages for infringement. Factors that will be relevant for a claim for additional damages include where there is a flagrant infringement and the need to deter similar infringements.
Previously, the Court could only award damages for actual loss suffered. Compensatory damages can be difficult to quantify. Further, a damages regime which was limited to compensatory damages provided a perceived environment whereby persons were more likely to infringe PBR knowing that there was potentially little practical consequence.
The PBR Act now has provisions dealing with unjustified threats of infringement. Recipients of groundless threats of PBR infringement may now bring a counterclaim against those who make unjustified threats. If threats are particularly flagrant, the recipient can be awarded additional damages.
PBR in essentially derived varieties
The PBR Act has been amended to allow a non-PBR-protected variety to be declared as an essentially derived variety (EDV). If PBR is granted in a plant variety (initial variety), and a declaration is made that another plant variety is essentially derived from the initial variety, the right granted in the initial variety extends to that other plant variety.
An essentially derived variety is a plant variety that is predominately derived from the initial variety and which retains the essential characteristics that result from the genotype or a combination of genotypes of that other variety, and does not exhibit any important features (as distinct from cosmetic) that differentiate it from the initial variety.
Previously, the PBR Act contained what was regarded as a loophole with respect of EDVs and non-PBR-protected varieties such that breeders could make minor changes to a second variety without infringing on the PBR of the initial breeder. Consequently, the PBR owner could only seek an EDV declaration in respect of a second variety if the second variety was subject to an application of a PBR. This loophole enabled others to evade EDV declarations over their new varieties simply by not filing a PBR application with respect to that new variety.
The PBR Act now allows for an exclusive licensee to take infringement action of the PBR which is the subject of the licence. An exclusive licence of PBR confers on the licensee, or on the licensee and persons authorised by the licensee, PBR in the plant variety, to the exclusion of the owner and all other persons.
Prior to the amendments, an exclusive licensee of PBR did not enjoy the right to bring infringement proceedings with respect to the PBR. The Amending Act rectified this apparent anomaly – exclusive licensees of copyright and patents have long enjoyed the benefit of being able to bring infringement actions with respect to those IP rights and there does not appear to be any reason why this should have been the case under the PBR Act.
Notably, the Amending Act permits the PBR owner to limit that right in any licence agreement.
The amendments introduced under the Amending Act clarify and provide greater certainty with respect to ownership of PBR. Specifically, if PBR is granted to persons who make a joint application, the PBR is granted to those persons jointly.
Prior to the changes, joint ownership was possible. However, there were issues regarding clarity of ownership in circumstances where there were more than two owners.
The new provisions will assist with defining joint ownership and removing ambiguity around joint ownership in certain circumstances.