Commencing from 24th February 2019, changes to the Australian Plant Breeder’s Rights Act 1994 (Cth) (the “Act”) will significantly benefit international and local owners of new plant varieties. Key aspects of the changes are outlined below. Please contact us should you require assistance regarding plant breeder’s rights protection in Australia, in light of these changes.
Essentially Derived Varieties
- An ‘essentially derived variety’ (the “EDV”) is a plant variety predominantly derived from the initial variety and exhibiting only minor changes.
- If the initial variety is subject to plant breeder’s rights protection (the “PBR”), a declaration may be sought to extend the PBR in the initial variety to the EDV (the “EDV Declaration”).
- If the EDV has been bred by an unauthorised person, an EDV Declaration can assist the owner of the PBR in the initial variety (the “PBR owner”). The breeder of the EDV cannot exercise any of the rights granted by the PBR – such as produce the material, order or sell the material, import, export or sell the material – without infringing the rights of the PBR owner.
- Where an EDV Declaration is made, the PBR owner and the breeder of the EDV may enter into a licence agreement to address issues of infringement.
- Currently, an EDV Declaration may only be made in circumstances where PBR protection has been sought for the EDV. The breeder of the EDV may side-step these provisions by not seeking PBR protection for the EDV.
- The Act will now be amended to allow an EDV Declaration to be made in respect of any EDV, regardless of whether or not the EDV is a PBR-protected.
- Both the PBR owner and their exclusive licensee will be able to seek an EDV Declaration, provided that the initial variety is not itself an EDV.
- Fulfilment of the ordinary registration criteria for the grant of PBR is required in relation to the EDV.
PBR Infringement Action by Exclusive Licensees
- The Act will be amended to expressly allow an exclusive licensee to bring infringement proceedings for infringement of the PBR by third parties.
- The PBR owner will still need to be involved in the infringement proceedings and may use the licence agreement to limit the rights of the exclusive licensee to institute such infringement proceedings.
- We consider that this amendment will encourage more international and local breeders and licensees to work together to seek PBR protection and exclusive licensing opportunities in Australia for new plant varieties.
Relief from Unjustified Threats
- The Act will be amended to allow persons to seek relief from unjustified threats of infringement of the PBR by the PBR owner or their exclusive licensee.
- Remedies include a declaration that the threats are unjustified, injunctions or the recovery of damages sustained as a result of the unjustified threats.
- The mere notification of the existence of the PBR in a plant variety does not constitute an unjustified threat.
Additional Damages for PBR Infringement
- The Act will be amended to allow for the relevant Court at its discretion, to award additional damages for PBR infringement.
- The Court will consider factors such as (i) the flagrancy of the infringement, (ii) the conduct of the infringer, and (iii) the benefits accrued to the infringer.
- The inclusion of this provision will assist the PBR owner where the infringer has acted in a particularly flagrant or wilful manner.
Disclaimer: For general information purposes only. Not intended as legal advice. Please contact us should you require assistance regarding your Australian Plant Breeder’s Rights portfolio in light of these changes.