New South African PBR Act: Overview of Upcoming Changes
By David Cochrane and Louise Myburgh
The South African Plant Breeders’ Rights Act No. 12 of 2018 (the new Act) was assented to on 27 March 2019 and published in the South African Government Gazette on 29 March 2019.
Although the new Act has been assented to, it is not yet in force. The new Act will only come into force once it has been proclaimed and Regulations have been published. This is only likely to take place in 2020.
Until such time as the new Act comes into force, the current Plant Breeders’ Rights Act No. 15 of 1976 (the current Act) and the Regulations thereto will remain in force.
South Africa is a signatory to the 1978 UPOV Act. Although the current Act complies with the 1991 UPOV Act in many respects, there were some areas that do not. One of the objectives of the new Act is to bring South Africa’s Law into line with the 1991 UPOV Act and then for South Africa to accede to the 1991 UPOV Act.
Below are some changes that the new Act will introduce, when it comes into force:
1. Establishment of a Plant Breeders’ Rights Advisory Committee
Section 45(1) of the new Act provides for the establishment of a Plant Breeders’ Rights Advisory Committee. This Committee will be set up to advise the Registrar on technical matters arising from the implementation of the Act, as well as the administration of the Act.
2. Prescribed List of Plants
Under the current Act, protection may be applied for plants that are on a prescribed list of plants specified in Table 1 of the Regulations made under the Act. The removal of this requirement from the new Act is a step that brings the new Act into line with the UPOV 1991 Act.
In terms of the current Act, the duration of a plant breeders’ right is 25 years in the case of vines and trees, and 20 years in all other cases calculated from the date of grant. Section 8(1) of the new Act makes provision for a period of 20, 25 or 30 years, depending on the kind of plant. The Regulations to the new Act will prescribe which kinds of plants each period applies to.
In terms of Section 15(3) of the new Act, the following actions do not constitute a sale of material for the purposes of the “new” requirement:
a) the sole purpose of the sale is for the person to multiply plant material of that plant variety on behalf of the breeder;
b) by virtue of the agreement of sale, ownership in the new plant material vests in the breeder immediately after the material has been multiplied; or
c) the sale is part of an agreement under which the person agrees to use plant material of that variety for the sole purpose of evaluating the variety in one or more of the following tests or trials;
i) field trials;
ii) laboratory tests;
iii) small-scale processing; or
iv) tests or trials prescribed for the purposes of this paragraph.
5. DUS Tests and Trials
Under the current Act, it is necessary to submit plant material for most types of plants, for DUS testing in South Africa. Currently, there is a time limit of 12 months for making material available for DUS testing, but it is possible, at the Registrar’s discretion, to extend the deadline for submitting plant material indefinitely.
In terms of Section 26 of the new Act, there will be a prescribed time limit for submitting material, but an extension of time will only be granted “for a period not exceeding the initial prescribed period” (Section 26(2)(b)). This may make it difficult for foreign applicants to submit plant material on time. This is of concern as the new Act provides that an application will lapse if plant material is not furnished within the prescribed period, or extended period (Section 26(2)(d)).
6. Plant Material
The new Act includes a definition of plant material. In relation to a variety, “material” means:
(a) any propagating material;
(b) harvested material, including an entire plant or any part of a plant; or
(c) any product made directly from the harvested material.
This definition provides clarity that protection will extend to a product made directly from harvested material.
A definition has been inserted into the new Act for the term “Conditioning”. In relation to propagating material of a plant variety, conditioning means:
(a) cleaning, drying, coating, sorting, grading or packaging of the material;
(b) testing for germination and vigour; or
(c) any other similar treatment, undertaken for the purposes of preparing the material for propagation or sale.
8. Farmer’s Privilege
The “farmers' privilege” provision of the current Act has been replaced with a new Section 10(1)(d) read together with Section 10(2), in terms of which the Minister will prescribe Regulations for:
i) the category or categories of farmers who may use the protected variety;
ii) the category or categories of plants that may be used;
iii) the uses to which the protected variety may be put; and
iv) where applicable -
(aa) conditions for payment of royalties; and
(bb) labelling requirements.
9. Exhaustion of Plant Breeders’ Right
Section 11 of the new Act provides that a plant breeders’ right does not extend to any act concerning material that has been sold or otherwise disposed of by the holder of the right or with his or her written authorisation unless the act:
a) involves further propagation of the variety in question; or
b) involves exportation of the material of the variety in question, which enables the propagation of the variety, into any country that does not protect varieties of the particular kind of plant, except where the exported material is for consumption purposes.
10. Criminal Offence
In terms of Section 55 of the new Act, infringement of a Plant Breeders’ Right is now a criminal offence. A person convicted of such an offence will be liable to a fine infringement for a period not exceeding 10 years, or both such fine and imprisonment. The Magistrates Court has jurisdiction to impose the penalty.
Section 49 of the new Act provides that the Registrar of Plant Breeders’ Rights may obtain a warrant (issued by a Magistrate) to inspect any premises where there is suspicion of infringement of a Plant Breeders’ Right. During the inspection, the Registrar may take samples and seizes plants, propagating material, substances, books and records.
About the authors:
Mr David Cochrane, Partner, Spoor Fisher,
Mr Cochrane is an admitted Attorney of the High Court of South Africa. In his practice, he specializes in domestic and international patent matters, including the preparation and prosecution of patent applications. As an expert patent attorney, Mr Cochrane has extensive experience in filing patent applications in various technical fields, as well as Plant Breeders’ Rights (PBR). He is the author of the PBR chapter of Dean & Dyer: Intellectual Property Law in South Africa. Being a fellow and a member of the South African Institute of Intellectual Property Law (SAIIPL), he acts as SAIIPL’s PBR Law & Practice lecturer and examiner.
Ms Louise Myburgh, Partner, Spoor Fisher,
Ms Myburgh is an experienced trademark attorney who acts for a number of local and international blue-chip companies. She specializes in domestic and international trademark registrations, searches and renewals, domestic and international trademark litigation, domestic and international copyright, company name objections and domain name disputes. Beyond her legal practice, she has lectured on Copyright at the Institute of Intellectual Property Law and is a frequent guest lecturer at the University of Stellenbosch. She is a fellow of the South African Institute of Intellectual Property Law and a member of the Cape Law Society.