Introduction

In 2005, the Australian Government requested the Advisory Council on Intellectual Property (ACIP) to review1 Australia’s Plant Breeders Rights (PBR) regime, focusing on the difficulties that PBR owners face in enforcing their rights.

ACIP has now released a final report (Report). The Report recommends legislative and procedural reform to address the various changes advocated by stakeholders.

Parts C and D of the Report makes a number of recommendations in relation to procedural, evidence and remedies reform aimed at assisting PBR owners to effectively enforce their rights. The proposed reforms seek to do this by clarifying, broadening and strengthening the enforcement of PBR in Australia, and by reducing obstacles to its enforcement. This includes by:

  • reducing the time and costs associated with court proceedings  
  • introducing new methods of obtaining evidence prior to commencing proceedings  
  • emphasising and improving the Alternative Dispute Resolution (ADR) options available to PBR owners, and  
  • strengthening available remedies and enforcement provisions.  

We set out below a brief overview of the principle recommendations made by ACIP in relation to enforcement procedure, evidence and remedies:

Jurisdiction – recommendation 14

ACIP has recommended that the proposed second tier of the Federal Court be given jurisdiction over PBR matters in an effort to provide quicker and cheaper resolution of disputes in a less intimidating forum than the Federal Court. This recommendation is based upon concerns that the high costs currently associated with legal proceedings is a ‘major impediment to the effective enforcement of PBR’.

The proposed second tier of the Federal Court would have an increased emphasis on ADR and would employ streamlined litigation procedures aimed at finalising proceedings in a short period of time (eg simplifying the commencement of proceedings and limiting or excluding pleadings and discovery).

ACIP’s recommendation notes that:

  • appropriately qualified magistrates would need to be available for PBR matters, and
  • practice notes would need to be issued to simplify and standardise procedures for expert evidence and DNA testing.

However, ACIP notes that even if this recommendation is adopted, many of the ‘high costs of court action would remain’.

ADR – recommendation 15

In light of the costs associated with litigation, ACIP recommends that IP Australia should facilitate ADR by:

  • publishing information on ADR options available to PBR owners, and
  • establishing a register of ADR service providers with PBR experience.

Further, as part of ACIP’s broader review of the enforcement of intellectual property in Australia (in particular, patents), ACIP is ‘currently considering the establishment of an IP dispute resolution centre’ that would ‘provide mediation, appraisal, and validity and infringement opinion services’. ACIP suggests that, if this centre were successful, consideration may be given to extending the centre’s services to PBR.

Due to the uncertainty surrounding some provisions of the Plant Breeders Rights Act 1994 (Cth) (Act) (in part due to the small amount of PBR case law in Australia and overseas), ACIP has also recommended the establishment of an ongoing expert panel to provide guidance and opinions on issues concerning the Act (see Part B, recommendation 12). The expert panel would focus on, in particular, the enforcement of rights under the Act. All opinions of this panel would be made publically available ‘in a manner that respects commercially sensitive material’.

Evidence – recommendation 17

ACIP notes that it is difficult for PBR owners to obtain evidence of infringement prior to commencing proceedings and that ‘this is one of the major impediments to the enforcement of PBR’. At present, methods available to PBR owners include:

  • seeking costly court orders (eg an Anton Piller order, or an order for preliminary discovery, from the Federal Court), and
  • inspecting properties pursuant to the terms of a pre-existing private contract.

(Note that additional procedures are available to PBR owners after the commencement of proceedings, including the usual discovery processes and by seeking orders for, among other things, the carrying out of experiments on property that relates to the subject matter of the proceedings.)

To address this issue, ACIP recommends the introduction of an ‘Information Notice system’ based on the United Kingdom Plant Varieties Act 1998. Briefly, where:

  • an Information Notice is served on a suspected infringer seeking confirmation of the source of harvested material and products made from that harvested material, and
  • the suspected infringer does not provide the information within a reasonable time,

the PBR owner may commence infringement proceedings and rely on a presumption in court that:

  • the plant material was obtained though unauthorised use of propagating material, and
  • the PBR owner did not have a reasonable opportunity to exercise its rights in relation to that material.

Damages – recommendation 19

At present, a PBR owner is entitled to damages or an account of profits (as well as an injunction) in successful civil proceedings against an infringer. Exemplary damages—awarded to punish particularly wilful or contumelious breaches of the law and to provide a greater deterrence to others—are not available in relation to PBR.

ACIP recommends that exemplary damages be available in cases of PBR infringement. ACIP considers that the availability of exemplary damages may encourage more civil proceedings (by potentially overcoming the high cost of litigation), deter infringing behaviour, and, help ‘address the lack of compliance experienced in some areas’.

Seizure of allegedly infringing goods – recommendation 18

The Australian Customs and Border Protection Service currently has no power to seize imported goods that allegedly infringe PBR (in contrast to goods that allegedly infringe copyright and trade marks). In order to have suspect imported plants seized, a PBR owner would need to commence infringement proceedings and obtain an injunction requiring Customs to so. ACIP considers this to be cost prohibitive and some stakeholders consider it to be a ‘major obstacle to effective enforcement’ of PBR.

Accordingly, ACIP has recommended the introduction of seizure powers for Customs in relation to PBR. The proposed system would require PBR owners to lodge notices of objection identifying the PBR material. The PBR owner would also be required to provide an undertaking to repay Custom’s expenses, and to accept liability in relation to the owner of the suspect material should that material be found not to infringe PBR.

Criminal investigations and prosecutions – recommendation 16

Given the high cost of civil proceedings and the small size of many PBR owners, ACIP considers that investigations by the Australian Federal Police (AFP) and prosecution by the Commonwealth ‘may offer the best chance of them enforcing their rights’. However, ACIP noted that since 2004 only two PBR matters have been referred to the AFP and that neither of these matters were pursued.

Accordingly, ACIP recommends that IP Australia liaise with the AFP and the Commonwealth Director of Public Prosecutions to seek to increase the number of investigations and prosecutions of PBR infringement.