By Richard Gough and Alanna Rennie, Baker McKenzie
On 24 October 2017, IP Australia released draft legislation to amend various intellectual property laws in Australia including Australia’s Plant Breeder’s Rights Act 1994 (Cth) (Act). The legislation is expected to be introduced into Parliament in early 2018. We outline the key changes.
1. Essentially derived varieties
The draft legislation introduces a long awaited amendment to the essentially derived variety (EDV) concept. EDV extends the plant breeder’s right (PBR) over an initial variety to another variety if the second variety is deemed to be essentially derived from the initial variety. The amendment will strengthen the effectiveness of the EDV provisions in preventing breeders free-riding, particularly through the use of mutant varieties and in the context of GM technology developments.
Currently EDV declarations can only be made in respect of registered varieties. Breeders can circumvent the EDV concept by not applying for PBR protection in relation to a second variety. The draft legislation closes the loophole by extending EDV declarations to non-PBR protected varieties.
There will be a separate application process for EDV declarations in respect of non-PBR protected varieties, which parallels the process for PBR protected varieties. The key differences for making EDV declarations in respect of non-PBR protected varieties are:
the applicant must establish that the variety is an EDV on the balance of probabilities (rather than the lower prima facie standard applied to PBR-protected varieties)
the applicant must prove that the second variety meets the PBR registration criteria
the applicant must bear all costs associated with any test growing required by the Registrar (these costs are borne by the person who fails to rebut the prima facie case when the EDV declaration application is for a PBR-protected variety)
the non-PBR protected variety details are entered on the PBR register if an EDV declaration is made.
2. Exclusive licensees
Under the current legislation, only the grantee (the PBR owner) can begin infringement proceedings. The draft legislation allows an exclusive licensee to take infringement action. An exclusive licensee is a licensee who has been given the PBR in a plant variety to the exclusion of all others, including the grantee.
This will allow exclusive licensees to protect their revenue streams. It will be particularly useful where the grantee is a foreign based entity and is reluctant to take infringement action due to cost and inconvenience.
The draft legislation also allows an application for a declaration of non-infringement to be made against an exclusive licensee, and requires the exclusive licensee to add the grantee as defendant to any infringement action if not already joined as a plaintiff.
3. Additional damages
Currently, courts can only award damages to compensate the grantee for actual loss suffered. The draft legislation gives the courts power to award additional damages, having regard to the flagrancy of the infringement, the need to deter similar infringements of PBR, the subsequent conduct of the infringer, and any other matter the court thinks relevant.
4. Unjustified threats of infringement
The draft legislation allows a person or corporation to apply to the courts for relief against unjustified threats of initiating PBR infringement proceedings, which can be made by circulars, advertisement or other means.
The draft legislation provides for the following remedies:
a declaration that the threats are unjustified
an injunction against the continuance of the threats
compensation for damage sustained by the applicant as a result of the threats.
The court may also award additional damages, having regard to the flagrancy of the unjustified threat and the need to deter similar threats.
The burden is on the person making the threat to prove that they were entitled to make the threat (being the grantee or the exclusive licensee) and that the threat was justified (that is, the acts in respect of which the threats were made were infringing acts or would be infringing acts if carried out).
The draft legislation makes clear that the mere notification of the existence of PBR in a plant variety does not of itself amount to a threat of infringement proceedings.
5. Priority dates from foreign applications
The Act allows a PBR applicant to claim a priority date from an earlier PBR application filed in another UPOV member state. Currently, to claim the earlier priority date, the applicant must lodge the Australian application within 12 months of the foreign application and provide the plant variety details necessary to complete the application within three years after the foreign application. The draft legislation extends the time-frame to provide the additional plant variety details to five years from the date of the foreign application.
6. Other amendments
The draft legislation also makes the following amendments:
a joint application for PBR can be made by multiple breeders, and is not limited to two breeders
removes written form requirements so that the Registrar of Plant Varieties can give information by any means, including by electronic means
vests greater power in the Registrar to rectify errors on the Register
for the purposes of determining when a variety has been only recently exploited and whether a variety is a matter of common knowledge, extends the relevant provisions to include sales of plant material and PBR applications filed in any other country, rather than any UPOV ‘contracting party’.
December 2018