Background

In October 2017, IP Australia released an Exposure Draft of the Intellectual Property Laws Amendment (Productivity Commission Response Part 1 and Other Measures) Bill (the draft Bill). The draft Bill follows a public inquiry by the Productivity Commission into Australia’s IP framework and seeks to implement a number of the Commission’s recommendations, together with some long-awaited changes to the Plant Breeder’s Rights (PBR) legislation.

While the proposed changes to other IP regimes, such as patents, seek to raise the bar to obtaining IP rights, the changes to the PBR regime enhance the protection provided to breeders of new plant varieties and their licensees.

Essentially derived varieties

Currently, breeders of a PBR-protected plant variety may apply for a declaration that a later variety of the plant, bred with only minor changes, is an essentially derived variety (EDV) of the initial variety. A successful application will see the original breeder’s PBR in the initial variety extend to the derived variety.

However, a loophole exists: currently, there must be an application for, or grant of, a PBR in respect of the later variety, in order for the original breeder to seek an EDV.

This allows downstream breeders to market copies of existing PBR-protected varieties, making only minor or cosmetic changes (sufficient to avoid infringement) and avoid any application for a declaration of an EDV, simply by not seeking PBR in them.

The draft Bill allows for an EDV application to be made in respect of a non-PBR protected plant variety, thereby closing the loophole.

Suing for unjustified threats

Current patent and trade marks legislation provides protection against unjustified or groundless threats of infringement proceedings. However, no such protection currently exists under the PBR Act, leaving farmers and small business vulnerable.

The draft Bill introduces to the PBR Act similar protection, allowing recipients of unjustified threats to sue for compensation, an injunction and a declaration that the threats are unjustified. It also allows the court to award additional damages, depending on the flagrancy of the threats and the need to deter similar threats.

Additional damages for flagrant infringement

Currently, under the PBR Act, the court’s statutory power to award damages is confined to damages to compensate the grantee for actual loss suffered. This can be limiting on the court’s power to deter particularly flagrant or wilful infringement.

As such, the draft Bill introduces a discretionary power for the court to award additional damages in appropriate circumstances. In our view, this is a welcome change, particularly as large-scale propagation becomes more rapid and accessible with developments in technology.

Exclusive licensee to sue for infringement

Currently, exclusive licensees of PBRs are unable to directly sue infringers themselves – any action must instead be taken by the PBR owner. This can significantly delay or impede exclusive licensees’ ability to enforce PBR rights.

The draft Bill, therefore, expressly provides for exclusive licensees to commence infringement proceedings in their own right. In this regard, it seeks to treat exclusive licensees of PBR rights consistently with exclusive licensees of patents, trade marks and copyright.

Consultation

Public consultation on the draft Bill is currently open, with submissions to IP Australia due by 4 December 2017.