When is a plant variety “distinct” and when is it “common knowledge”?

For a plant variety to be registrable by Plant Breeder’s Rights (PBR) it must be “distinct” from any other variety whose existence is a matter of common knowledge.[1]  This begs the question, what makes a variety a variety of common knowledge?  A recent decision from the PBR Office has clarified this issue and provided guidance regarding how distinctness should be measured against such varieties.  The case concerned a variety of Lomandra (pictured) named “Lime Tuff” for which Bushland Flora (Bushland) was granted PBR in 2011.   Majestic Selections Pty Ltd (Majestic) applied to the PBR Office for revocation of the PBR on a number of grounds, including that Lime Tuff was not distinct and that the applicant, or breeder nominated by the applicant, did not breed the variety.

 

The facts

Majestic provided evidence in the form of phenotypic/morphological analyses of a number of Lomandra plants, and parts of plants, which it considered were indistinguishable from Lime Tuff.  One of those samples was obtained from plants growing in the yards of a local primary school.  Majestic provided evidence showing that the primary school had purchased the plants from Kuranga Nursery several years before the PBR application for Lime Tuff had been filed.  Those plants were referred to as the “Kuranga” variety.

Distinctness

Majestic’s expert botanical witness claimed that the phenotypic differences between Lime Tuff and the Kuranga variety were slight and that Lime Tuff could not be considered a new plant variety.  Bushland’s botanical expert on the other hand compared the Kuranga variety to Lime Tuff and identified differences in the dimensions of the leaves which he considered to be “conclusive that the plants differ”.[2]  The Delegate disagreed, noting that the differences in leaf dimension were small and were based on plants that were grown in different locations and not under controlled trial conditions.[3]  Given that the phenotypes in question were quantitative and would be environmentally influenced, the differences were insufficient to demonstrate that the Kuranga variety was clearly distinguishable from Lime Tuff.

Majestic also provided genotypic data which it claimed further demonstrated the similarity between the plants it had identified and Lime Tuff.  On the use of genetic data, the Delegate stated that, although genetic similarities might add weight to the argument that the plants are indistinguishable, “in itself it is not sufficient to draw conclusions about the phenotypic distinctness or otherwise of the material tested”.[4]  Accordingly, the Delegate placed much greater weight on the phenotypic differences in concluding that Lime Tuff was not distinct from the Kuranga variety.

Common knowledge

The next issue that required addressing was whether the Kuranga variety was a “variety of common knowledge”. On that issue, the PBR Act provides “in addition to any other reason” a variety is to be treated as a variety of common knowledge if it is the subject of an application for PBR and the application is proceeding, or has led, to grant of PBR.[5]  This open-ended statement makes the decision a discretionary one and so the Delegate looked for guidance from the internationally adopted guidelines of the International Union for the Protection of New Plant Varieties (UPOV). Relevantly, those guidelines provided that a variety may be one of common knowledge if it has been commercialised.  Noting that the Kuranga variety had been sold to a primary school, the Delegate stated that “The sale of these plants by Kuranga [Nursery] establishes the Kuranga variety to be a plant variety of common knowledge as it has been commercialised”.[6]

Bushland argued that the Kuranga variety was not typical of the Lomandra plants typically sold by the Kuranga nursery which, it conceded, were well known but were sold under the label “Little Pal”.  The Delegate acknowledged that this might very well be true, but that it was not material in determining whether the Kuranga variety was one of common knowledge.  What mattered was whether the Kuranaga variety fell within the legal definition of “variety”, which it did.  The Delegate observed that it is not a requirement for a variety to be sold under a particular denomination or label for it to meet the definition of variety or for it to be considered a variety of common knowledge.[7]

Too much information?

The breeder for Bushland claimed that Lime Tuff was a hybrid of two species, namely, Lomandra longifolia and Lomandra confertifolia.  However, Majestic’s botanical expert and the Melbourne Herbarium were both of the view that Lime Tuff belonged to the species Lomandra confertifolia, and was not the result of hybridisation.  It was therefore unclear, based on the facts, how Lime Tuff was bred.  What was clear, however, was that the breeder for Bushland could not have bred Lime Tuff in the manner in which he had claimed.  The Delegate stated that “if this had been known at the time of grant the PBR would not have been granted”.[8]  This raises the interesting possibility of a PBR application being rendered vulnerable by including too much information.  If the breeder for Bushland had expressed more uncertainty, or had provided less detail, regarding how Lime Tuff had been bred, the Delegate’s decision on this ground may have been different.

Lessons

  • A variety may become “common knowledge” once it has been commercialised.
  • A variety does not need to have been commercialised under a specific denomination or label for it to be considered a “variety” or a “variety of common knowledge”.
  • Genotypic data can support a claim for distinctness, but is unlikely to be determinative.
  • Although grant of a PBR rarely hinges on the breeding methodology set out in the application, the PBR may be vulnerable to revocation if the methodology is inaccurate.

 

[1] Plant Breeder’s Rights Act 1994 (Cth) ss 43(1)(b), (2).
[2] at [31]
[3] at [32].
[4] at [23].
[5] Plant Breeder’s Rights Act 1994 (Cth) s 43(8).
[6] at [37].
[7] at [20], [34]-[37].
[8] at [50].