The report was commissioned by the Government in 2005, with ACIP to -
inquire, report and make recommendations to the Australian Government on issues relating to the enforcement of plant breeder's rights in Australia and to consider possible strategies to assist Australian plant breeder's rights holders to effectively enforce valid rights. The review should include a consideration of whether any practices and procedures relating to the enforcement of plant breeder's rights are appropriate to be referred to the Federal Magistrates Court.The current document reflects feedback on an initial report, ie an exposure draft. It relates to the Plant Breeder's Rights Act 1994 (Cth), an industrial property statute that gives monopoly rights - subject to some infringement defences and restrictions - regarding plant varieties (eg breeds of corn that have been tailored for rapid growth or drought resistance).
Section 11 of that Act thus characterises PBR in a plant variety - no, contrary to alarums and soothsaying among the alfoil beanie demographic you cannot get PBR in a human - as the exclusive right, subject to that Act, to -
do, or to license another person to do, the following acts in relation to propagating material of the variety: (a) produce or reproduce the material; (b) condition the material for the purpose of propagation; (c) offer the material for sale; (d) sell the material; (e) import the material; (f) export the material;(g) stock the material for the purposes described in paragraph (a) through (f).The Act gives effect to the International Convention for the Protection of New Varieties of Plants (UPOV Convention), with protection typically being for 20 to 25 years and covering 'plants' such as trees, vines, grains and vegetables. The regime is similar to that under the Patents Act 1990 (Cth), with for example a registration requirement.
The report makes recommendations about the enforcement of the rights meant to be enjoyed under PBR. They include -
1 A new “purchase” right be added to s.11. This new right would only apply to those taxa that are specifically declared in the regulations. Industry sectors such as wheat breeders would apply to the PBR Office to have particular taxa so declared.
2 The PBR Act be amended to clarify that harvested material that is also propagating material is to be considered as propagating material for the purposes of s.11, even if it is not being used for that purpose.
3 No changes be made to extended rights under s.14 and 15.
4 There be no change to the operation of farmer’s privilege under s.17. However, s.17 should be amended to state in easily understood terms that s.17 does not provide the farmer with the right to perform the acts listed in s.11(a) to (g). For example, the farmer will still require the PBR owner’s authorisation to sell the reproduced propagating material, the harvested material or the product of the harvested material.
5. As part of IP Australia’s education and awareness programs, raise industry awareness of the opportunity under s.17(2) to have specific taxa excluded from the farmer’s privilege exemption.
6. Encourage PBR owners to make clear to growers the conditions of sale of propagating material and their obligations in relation to future generations of it. This includes making clear that growers require the authorisation of the PBR owner to sell crops grown from farm-saved seed.
7. No changes be made to s.17 in relation to asexual propagation at this time.
8. Enable Essentially Derived Variety (EDV) declarations to be made in respect of any variety.
9. Amend s.4(c) by replacing the test for important features with a test for essential characteristics.
10. Retain responsibility for EDV declarations with the PBRO and ensure the PBRO has the ability to assess such applications. This may involve the PBRO seeking advice from an external body or expert. If, in the future, a Patent Tribunal is established and proves successful, consideration should be given to expanding its remit to include declarations of EDV.
11. In relation to s.23 and exhaustion: A. No changes be made to s.23 as it applies to the current acts referred to in s.11. B. Section 23 be amended to provide that PBR does not extend to an act of purchase of the material referred to in s.11 that takes place after the propagating material has been sold by the PBR owner unless that act involves any production or reproduction of the propagating material. This includes growing the first generation crop comprising propagating material that is grown from purchased propagating material. C. Clarify in the PBR Act that the mere sale of propagating material G0 for purposes of growing and selling G1 does not necessarily imply a licence to purchase crop G1.
12 An on-going Expert Panel be established to provide guidance and opinions on general issues or specific cases concerning the PBR Act and related law. The Panel should comprise appropriate people with expertise in relevant areas who provide their services as required. Upon request from any person and for a moderate fee, the Panel may provide detailed guidance and opinions on general issues or specific cases concerning the PBR Act and related law. The Panel should focus on the enforcement of granted rights and not provide advice on the registrability of individual applications for PBR. The Panel’s opinions should be made publicly available in a manner that respects commercially sensitive material. The Panel may refer matters to the Government or ACIP as it sees fit.
13. No changes be made to the pre-grant enforcement provisions.
14. The jurisdiction of the second tier of the Federal Court of Australia to include PBR matters. Appropriately qualified magistrates must be made available and there should be appropriate measures taken to ensure the processes of the second tier are faster and cheaper than in the first tier. Examples include simplifying and standardising procedures for expert evidence and DNA testing through the issuing practice notes, use of alternate dispute resolution where appropriate, and curtailing of the discovery phase.
15. IP Australia facilitates ADR for parties in dispute by establishing, maintaining and making publicly available basic information on the ADR options available to PBR owners and a register of ADR service providers with PBR and plant breeding experience. As part of its review of post-grant patent enforcement strategies, ACIP is currently considering the establishment of an IP dispute resolution centre. The centre envisaged by ACIP would provide mediation, appraisal, and validity and infringement opinion services, delivered by experts drawn from a panel on a case-by-case basis. If such an IP dispute resolution centre is established for patents and proves successful, consideration should be given to extending its services to PBR matters. The IP dispute resolution centre envisaged by ACIP would also provide non-binding determinative service though a Patent Tribunal. If a Patent Tribunal is established and proves successful, consideration should be given to extending its jurisdiction to PBR matters.
16. IP Australia to liaise with the AFP and CDPP with a view to increasing the number of investigations and prosecutions of PBR cases due to the special circumstances (including the marginal profitability of some sectors and an apparent widespread lack of compliance) that exist in the plant breeding industry.
17. Introduce an Information Notice system into the PBR Act based on the UK Information Notice system. This would enable PBR owners to obtain information from suspected infringers on the source of plant material. Where this is not supplied within a reasonable time, legal proceedings may be commenced in which the presumption is made that the plant material was obtained through unauthorised use of propagating material and that the PBR owner did not have a reasonable opportunity to exercise its rights in relation to the material.
18 Introduce into the PBR Act PBR seizure powers for Customs which incorporates features of the Australian notice system for trade marks and the European system. The system should minimise the resources and skills required of Customs, enable the PBR owner to identify the imported material and allow cases where there has been
infringement to be resolved quickly and without legal action.
19. Introduce exemplary damages provisions for PBR based on s.122 of the Patents Act.
20. The Government take no action in establishing an industry peak body or collecting agency at this time. The Government should reconsider this approach should sectors of the plant breeding industry come to an agreement on the structure and function of a central body and seek the Government’s assistance.
21. IP Australia focus its PBR educational and awareness efforts on the tertiary sector. This should involve increasing its involvement in facilitating PBR education curricula and other information fora. IP Australia should investigate facilitating the inclusion of PBR curricula in university science and science-related courses and at agricultural colleges.
22. The Government take no action in relation to the development of standard contracts and licence agreements at this time.
23. It is not clear whether sections 52 and 53 of the Trade Practices Act 1974 and various State and Territory Fair Trading Acts provide sufficient protection against mendacious variety declaration. If existing legislation does not make it illegal for a corporation or person to knowingly and falsely represent a PBR protected variety, the PBR Act should be amended to make such an act an infringement of PBR.
