Intellectual Property Rights for Plants in Australia and New Zealand
Published on 11 Jul, 2015
In Australia, new plant varieties can be protected by both Plant Breeder’s Rights (PBR) and patents. In New Zealand, new plant varieties can be protected by Plant Variety Rights (PVR) while plants per se can be protected by patents. The form of protection which is most appropriate will require a consideration of the rights provided by each, and the requirements that must be met to obtain them.
The lower level of protection afforded by PBR/PVR compared to patents is generally regarded as commensurate with the often lower levels of inventiveness that plant breeding involves. However, as will be discussed below, it does not follow that a plant variety which meets the statutory requirements for PBR/PVR protection is prohibited from patent protection. Accordingly, due consideration should be given to both forms of protection in Australia and New Zealand.
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.
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. Strengthening this push is the recently announced free-trade agreement with China, which will see a significant reduction of tariffs for Australian produce.
Australia’s Plant IP Landscape
Over the last 15 years, the Australian plant breeding industry has seen dramatic developments from one which was predominately government funded to one which is almost entirely privatised. Not surprisingly then, the last decade has seen an increase in Australian patent applications in the field of plant science (IPC code A10H) at what appears to be the expense of PBR filings. As we discuss below, patents can offer a stronger form of protection compared to PBR provided, of course, the requirements for patentability are met.
The figures below provide a general overview of the major applicants for Australian patents in the field of plant science (IPC code A01H) and the most common words found in the abstracts of these patents in January 2015.
It is no surprise that the dominant players include multinational companies such as BASF Plant Science, Monsanto, Dow AgroSciences, Pioneer Hi-Bred, Syngenta and Bayer CropScience as well as local organisations such as the Commonwealth Scientific and Industrial Research Organisation (CSIRO) and the Grains Research and Development Corporation (GRDC). The figure on the right shows that transgenic plants are a common subject of patents in the field of plant science. However, as will be discussed below, this by no means a requirement for patentability in Australia.
IP Rights for New Plant Varieties in Australia
The two main options available for protecting new plant varieties in Australia are PBR and patents, and each is discussed in turn below. Other commercially useful forms of protection which should be kept in mind include trade marks, copyright and contracts.
A. PLANT BREEDER’S RIGHTS
Statutory protection of plant varieties in Australia is provided by the Plant Breeder’s Rights Act 1994 (Cth) (“PBR Act”), which was implemented in accordance with Australia’s obligations under the International 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.
The term of protection lasts for 25 years in the case of trees and vines or 20 years for all other eligible varieties. 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. 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.
Despite being a major disincentive to plant breeding, the farm-saved seed exemption is 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 considered to be a more equitable form of compensation, as it involves the breeder and the grower sharing the risk that the variety will be a commercial success. However, the EPR system contains many inefficiencies resulting from transactions between entities that are liable under the PBR Act and entities that are not.
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 only to propagating material, but also to other parts of the plant and, of course, to the 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.
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”. This decision defines patentable subject matter in a manner which can be adapted to new technology as it develops. Consequently, biological material, including plants, is patentable-eligible in Australia. More recently, the Australian courts have confirmed that there is “no intrinsic impediment to the patentability of plant varieties”.
Plants are also eligible for patent protection in the US, although this may change following the recent decision by the US Supreme Court in Association for Molecular Pathology v Myriad Genetics Inc. 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. However, the decision has now been appealed to the High Court.
Unlike Europe, where plant varieties are excluded from patent protection, 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 (obviousness) 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 of investigation 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. Compared to the Australian test, 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, in Australia, it remains the case 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.
Protecting Plants in New Zealand
New Zealand offers protection for new plants under the Plant Variety Rights Act 1987 as well as under the Patents Act 2013.
Plant Variety Rights
To obtain PVR in New Zealand, an applicant must demonstrate that the variety is new, distinct, homogenous and stable. Once granted, the PVR holder has the exclusive right to produce reproductive material of the variety for sale (or authorise this activity), sell the reproductive material of the variety (or authorise this activity), propagate the variety for commercial purposes, and import produce of the variety. The rights of the grantee last for 23 years in the case of woody plants or 20 years for all other eligible varieties. Activities that are exempt from infringement include propagation, growth and use of a protected variety for non-commercial purposes as well as use of reproductive material for human consumption or other non-reproductive purposes. Importantly, use of a protected variety for further breeding is also exempt from infringement, provided the variety is not used repeatedly for the commercial production of F1 hybrids.
Since 13 September 2014, “plant varieties” have been excluded from patentability in New Zealand. This exclusion mirrors Article 53(b) of the European Patent Convention. However, unlike Europe, New Zealand does not exclude essentially biological processes for the production of plants. While the impact of this exclusion remains to be seen in New Zealand, judging from several European decisions, it is likely to be fairly minimal. In this regard, claims directed to plants per se will still be allowable, even if those claims encompass a plant variety.
In Australia, the 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 and New Zealand produce from our Asian neighbours, IP is certain to play an increasingly important role in protecting agricultural innovation in both jurisdictions.
The somewhat lower level of protection afforded by PBR/PVR 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 PBR/PVR protection is prohibited from patent protection. In Australia at least, 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 well as New Zealand.
Shelston IP has specialist expertise in plant breeding and biotechnology, and in particular in relation to the prosecution of PBR and patent applications directed to new plant varieties. If you would like further advice regarding the best way to protect your new plant variety in Australia, please contact Jacinta Flattery O’Brien.
 Australian Bureau of Agricultural and Resource Economics and Sciences, Agricultural Commodities September Quarter 2014.
 The Coalition’s 2030 Vision for Developing Northern Australia, June 2013.
 Grain Pool of Western Australia v Commonwealth of Australia (2000) 202 CLR 479.
 Association for Molecular Pathology v Myriad Genetics Inc 596 US 12-398 (2013).
 D’Arcy v Myriad Genetics Inc  FCAFC 115.
 IP Australia, Getting the Balance Right: Towards a Stronger and More Efficient IP Rights System, March 2009.