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This one is on a fairly narrow point: what is the term of rights where the application was made under the old (PVR) act, but registration was not completed until after the new (PBR) act.

Such matters are governed by s 83 of the Plant Breeder’s Rights Act.

Rights granted before the PBR Act commenced have a term of 20 years from acceptance (PBR Act s 82(2) and PVR Act s 32); in contrast, rights granted pursuant to applications filed after the PBR Act commenced have a term of 20 years from grant (except for trees which may have up to 25 years).

Patentology has a report.

Elders Rural Services Australia Limited v Registrar of Plant Breeder’s Rights [2012] FCAFC 14 allowing an appeal from

Elders Rural Services Australia Limited v Registrar of Plant Breeder’s Rights [2011] FCA 384

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The Government has announced its responses to ACIP’s reviews of:

• post-grant Patent enforcement; and
• enforcement of plant breeder’s rights.

On a quick skim, the main recommendation to introduce a Patents Tribunal to determine “IP” disputes has been found non-viable due to the limitations on the Commonwealth’s repository of judicial powers. With WIPO’s arbitration and mediation service in mind, however, IP Australia is to work with alternative dispute resolution providers to provide a new ADR resource. In the PBR context, the Government states that it does not consider it appropriate for IP Australia, as a regulatory agency, to provide post-grant mediation services itself.

The review on PBR has received rather mixed results.

The Government has not accepted the proposal to introduce a “purchase” right.

The PBR Act will be amended to clarify that harvested material which can also be used as propagating material qualifies as propagating material for the purposes of the Act’s prohibitions.

The Government accepts that no changes to the operation of ss 14 and 15 are required.

At this stage, the Government considers that the making of “mendacious” declarations of PBR is adequately covered by the prohibitions on misleading or deceptive conduct in trade or commerce.

Lots of recommendations for more education.

No doubt, you will have your own favourite recommendation(s), but (as I am not a Kat, ip or otherwise) that is all there is time for today!

The Minister’s Getting Tougher on Imitators press release.

ACIP’s “patents” review (pdf).

ACIP’s PBR review (pdf).

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Caithness applied for the grant of plant variety rights for the potato variety ‘Nadine’ on 21 May 1992.

That application was accepted by the Registrar on 28 May 1992.

On 10 November 1994, the Plant Breeder’s Rights Act 1994 came into force and repealed the Plant Variety Rights Act 1987.

On 16 August 1995, Caithness’ application for Nadine was granted and certificate 465 was issued.

Under the old Act (the PVRA), the term of a registration was 20 years from the date of acceptance; i.e. until 28 May 2012. The term of registration under the New Act, however, was 20 years from the date of grant; i.e. until 16 August 2015. Elders, Caithness’ exclusive agent for Australia, challenged the Registrar’s conclusion that the term applicable was that under the old Act.

If Nadine had actually been registered before the old Act was repealed, s 82 of the new Act meant it would have the longer term of protection (i.e., measured from the date of grant) conferred by the new Act as if it had been registered under the new Act.

Because Nadine had only been accepted when the new Act came into force, however, Lander J has ruled that it did not fall under s 82, but s 83.

Moreover, the drafting of s 83 led to the ‘unfairness’ that Nadine was only entitled to protection for the term applicable under the old Act; i.e. until 28 May 2012.

His Honour refused to apply the principle in Inco Europe Ltd v First Choice Distribution [2000] UKHL 15 and interpret s 83 as if additional words could be read into it to remedy an obvious drafting error:

85 The additional words which should be read in at the end of s 83 are said to be “save that a successful applicant will be granted PBR pursuant to the provisions of the Act”.

86 Assuming this Court had the power to do what the applicant contends, the Court should decline to exercise the power for two reasons which follow from the reasons for the construction that I have suggested. First, it would mean that an applicant who could not comply with s 44 of the new Act would have to be deemed to have complied otherwise the application would have to be refused. That would require some further words to be notionally added. Secondly, the applicant would obtain rights, being PBR, that s 82 contemplates that an old Act applicant should not be entitled. The applicant would obtain the rights which are specifically excluded in s 82(3) and (4). That would be a very odd result. It would mean that an applicant who had been granted plant variety rights under the old Act would be deemed to be entitled to PBR without the rights in s 82(3) and (4), but an applicant who had made an application under the old Act but who had not been granted any rights would become entitled to PBR including the rights under s 82(3) and (4).

87 This is not a piece of legislation which can be redrawn by the Court. The unfortunate result which the drafting error discloses is a matter for Parliament.

Elders Rural Services Australia Limited v Registrar of Plant Breeder’s Rights [2011] FCA 384

Patentology’s take

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Prime Ministers Gillard (Australia) and Key (EnZed) have reaffirmed their countries’ respective commitment to closer co-operation in (industrial) IP matters between the two countries as part of the Trans Tasman Single Economic Market.

Apparently, over the next 5 years our countries will work towards:

According to the Statement issued on 16 February, the single application process for patents in both jurisdications will involve 2 stages. In the first stage, “both countries will rely on each other’s work, where possible, to build confidence and simplify processes”. In the second stage, there will be a “single examination process”.

Apparently, this will not involve changing either country’s patent laws as the Statement explains:

Examiners will grant or refuse applications under each country’s law. It will not be necessary for our laws to be identical.

and

Australia and New Zealand will operate as one integrated patent examination entity in practice – not in law. Both countries will retain flexibility to implement legislation and policies.

All this is forecast to take 3 years.

In contrast, streams 2 and 4 envisage one (trade mark or plant breeder’s) regime. That seems to indicate than one or other of our respective trade mark or plant breeder’s laws will need to change because (so far as I understand it – not very far at all, really) EnZed trade mark law is much closer to “modern” (ie. 1994) UK legislation and hence EU rules. Is it too soon to start boning up on ECJ rulings?

See also here and here.

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The European Court of Justice has dismissed Ralf Schräder’s appeal from the rejection of its registration for plant breeder’s rights in plectranthus ornatus.

It would seem after detailed genetic testing, including travel to South Africa, the EU regulatory authorities have determined the variety the subject of the application is not distinct from a common South African plant.

IPKat has a good overview, with links to earlier stages in the dispute, here.

Case C?38/09 P Ralf Schräder v Community Plant Variety Office

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ACIP has published its final report into the Enforcement of plant breeder’s rights in Australia.

The report is here (pdf) – be warned 138pp, Exec Summary is 10pp.

Some recommendations:

Recommendation 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.

Recommendation 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.

Recommendation 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.

Recommendation 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.

Recommendation 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.

Recommendation 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.

Recommendation 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.

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