Australasian Biotechnology (backfiles) AusBiotech ISSN: 1036-7128 Vol. 10, Num. 2, 2000, pp. 30-31

Australasian Biotechnology, Vol. 10 No. 2, 2000, pp. 30-31

INTELLECTUAL PROPERTY - PBR: Protecting Plant-Biotech Innovation

Ashley Turner

Code Number: au00023

One of the most interesting and controversial intellectual property (IP) issues in recent years has been the extent to which living material can be protected. From an Australian agri-biotech perspective, IP commonly takes the form of plant breeder’s rights (PBR) and/or patent protection. This article focuses on the requirements and merits for obtaining PBR, provides a brief comparison to the patent system, and discusses the future direction of PBR in Australia.

With the objective of stimulating plant breeding in Australia, PBR are monopoly rights that apply to propagated material of a new plant variety or ‘breed’ - which may include fungi, algae or transgenic varieties. PBR also extends to the name given to the new variety. The PBR owner is provided with the right to commercially exploit the propagated material for a fixed term - 25 years for vines and trees and 20 years for other plants.

The Australian PBR system has steadily evolved over the last 10 years to provide the widest protection of plant varieties in the world - from staple products such as wheat and barley to obscure forms of fungi. Being unencumbered by precedent, the Australian system has implemented specialised schemes to deal with particular plant breeding requirements. Encouragingly, similar methodology has emerged worldwide - with emulation of Australian systems even by countries regarded as agricultural ‘powerhouses’, such as Canada.

The driving force of this evolution is the Plant Breeders Rights Advisory Committee (PBRAC) which has a direct impact on the Plant Breeders Rights Act 1994. The 1994 Act replaced the Plant Variety Act 1987 and reflects the more recent approach by plant breeders to new innovation. This current Act also ensures that Australia complies with the International Convention for the protection of New Varieties of Plants (UPOV).

PBR Requirements

For PBR protection, a new variety must have a breeder, or someone who is a successor in title and possess characteristics that are:

• Distinct from other plant varieties ie. it cannot be a plant that is of ‘common general knowledge’ at the time of the PBR application.
• Uniform - but with allowances for an expected degree of variation for each particular species.
• Stable and remain unchanged after repeated propagation.

The new variety must not have been commercially exploited for more than a year before the date of the PBR application, or in another UPOV Convention country more than 4 years before that date.

PBR Rights

Providing the above criteria are met, a PBR provides the exclusive right to, or licence another to re/produce, sell, condition, stock, import or export the plant material. The right covers certain dependant varieties as well as material harvested or products created through the propagating material. It may also extend to ‘essentially derived varieties’ for which the PBR has been obtained or sought by another person.

However, with this protection comes certain limitations for the PBR holder:

Another person may privately experiment with protected plant varieties eg. for breeding new varieties ie. non-commercial use only.

• The ‘farmer’s privilege’ allows farmers to harvest and use seed to plant future crops (up to 95% of the current wheat crop is established this way).
• Propagating material may be used as a food, ingredient or fuel or any other purpose that does not involve reproduction of the material.
• Material must have ‘reasonable public access’ in terms of quality, quantity and price.
• Sale of the propagating material ‘exhausts’ the PBR to the extent that the material may lawfully be sold or imported thereafter, but it may not be used for production or reproduction. This exhaustion however does not apply if the propagating material is sold to a country that does not provide PBR.

In effect, PBR provides the owner with the ability to take action against unauthorised third parties seeking or obtaining commercial gain through propagation of protected new plant variety material.

PBR vs Patent

Advantages of the PBR scheme are that the rights obtained are relatively cheap, easy to secure and may cover material not suited to the patent system, such as a useful breed resulting from a natural mutation that someone ‘discovers’. >From an empirical viewpoint, a patent however offers a more extensive monopoly if viewing infringement to occur whenever a patentee is ‘deprived of the natural profit and advantage of the invention’. Such infringing acts (depending on the patent claim wording) include the sale of the patented plant seed, patented gene(s) or resulting products, without the authorisation of the patentee. Limitations of patent protection are reached if bona fide experimentation produces a new variety from a patented variety - as no infringement occurs if the new variety is not repeatedly used.

As mentioned earlier, a secondary breeder may ‘essentially derive’ a new variety from an original PBR variety, but current statutory wording on this matter can leave the original owner at a loss. The statute relating to essential derivation allows the secondary breeder to argue that an ‘important’ difference (ie. not cosmetic) differentiates their variety from the original and that it is therefore not essentially derived. A successful differentiation allows the second breeder to avoid seeking permission (and therefore licensing costs) from the original breeder to commercialise their new variety.

PBR and Patent?

There is a growing trend within the plant breeding industry to make a practical decision between patent or PBR protection for a new plant variety, mainly depending on the extent of innovation and the scope of protection required. Fortunately, in Australia these systems may be utilised concurrently and dual protection is of particular use for those plants produced by novel biotechnological processes, the products of which may be easily derived from cell or tissue culture. Therefore, in addition to protection of the end product via PBR, breeders may also seek patent protection for techniques used in production of new varieties. eg. Vectors and other gene transfer systems.

A patent in any case may protect any plant with a particular property (providing novelty and inventiveness requirements etc are satisfied) and not just one specific breed. Patent protection is certainly the most appropriate scheme for a genetically modified plant variety eg. Florigene’s blue carnation ‘Moondust’. A patent could potentially cover the blue flowers per se and extend to the ‘Blue Gene’, vectors and related technology used to produce the transgenic plant. PBR protection in this case would extend to dealing commercially in the propagating material of the blue carnation variety.

In the event that both patent and PBR protection are sought for a new plant variety, of immediate importance is whether the filing of one application before the other will compromise the later type. In this situation a patent application is best filed before a corresponding PBR filing.

PBR in the future

A recent point of discussion within the PBR Advisory Committee and the plant breeding industry is the issue of ‘end point’ royalties to PBR owners. Due to the ‘farmer’s privilege’ of using harvested seed to plant future crops, breeders are forced to charge a premium on a low volume of seed sales. The logical outcome is that such royalties are barely enough to cover commercial costs, let alone the return of any significant profit.

To ameliorate this discrepancy, the industry focus is now shifting towards charging royalties on the harvested product as it comes to the point of first sale. Draft amendments to the PBR Act, driven by the PBRAC seek to distil and clarify obligations already associated with existing rights and encourage recoup of investments at the point of production output.

From the Australian perspective, plant-based biotech companies may recognise the opportunity for greater economic return in new plant varieties and re-evaluate their strategies accordingly. Such a charging system represents a significant economic opportunity, particularly for those firms prepared to consistently provide new varieties of field crops.

• To obtain further detail of the issues summarised in this article and direct links to PBRAC, the official website is: www.affa.gov.au/agfor/pbr/pbrwhat.html

(1) Intellectual Property in Australia, 2nd Ed, McKeogh, J and Stewart, A.J. (1997).

(2) Kind assistance by Mr Doug Waterhouse of the Plant Breeders Rights Office.

Copyright 2000 - Australasian Biotechnology