Grains Research and Development

Date: 01.04.2005

A sport of nature: patent law and plant breeder's rights

Photo of Dr Matthew Rimmer

By Dr Matthew Rimmer

[Photo: Dr Matthew Rimmer: continuing to exclude plant and animal subject matter from innovation patents "will ensure that the patent system and the PBR regime operate in mutual harmony, rather than in conflict and opposition". Photo by Brad Collis]

Since its re-election, the Australian Government has moved to harmonise the patent system and the Plant Breeder"s Rights (PBR) regime – and there have been two important developments.

First, there has been an institutional decision to shift the Plant Breeder"s Rights Office (PBRO) to IP Australia. Second, there has been a policy decision to continue to exclude plant and animal subject matter from the scope of innovation patents. These two key policy decisions will help provide a coordinated and integrated approach to intellectual property in agriculture.

On 10 December 2004, the PBRO officially moved from the Australian Government Department of Agriculture, Fisheries and Foresty (DAFF) to IP Australia. The office administers the Plant Breeder"s Rights Act 1994. The legislation promotes plant innovation by granting the owner of a registered new variety the opportunity to exercise limited commercial rights regarding propagating material. Such rights cover the production, reproduction, conditioning, sale, import, export and stocking of the material.

The Australian Government decided to transfer the PBRO to IP Australia to consolidate and defragment the administration and policy development of intellectual property in Australia.The move should benefit those engaged in research and development in the agricultural sector. It will mean that applications for patents and PBR will be able to be filed in the one place.

The decision has been welcomed by the director general of IP Australia, Dr Ian Heath, who says the organisation aims to continue the work that the PBRO has been doing within DAFF to ensure service levels and examination quality are sustained.

The PBRO Registrar, Doug Waterhouse, is also optimistic that the move will provide greater opportunities. He says IP Australia"s "critical mass" and expertise will be important for advancing the understanding of PBR issues among breeders and consumers while fostering the investment environment for plant improvement. "

Operationally, it will be business as usual and clients should continue to work with the PBRO as they have before," says Mr Waterhouse. "Undoubtedly, IP Australia will also benefit by being able to draw upon the expertise of the office in dealing with patents in the field of agriculture and biotechnology."

In November 2004, the Advisory Council on Intellectual Property released its report, ‘Should plant and animal subject matter be excluded from protection by the innovation patent?"

The report considered whether Australia should provide an intermediate level of patent protection – the innovation patent – for plants and animals and the biological processes for their generation. Innovation patents were introduced in 2001 in response to demand in Australia for an inexpensive second-tier or intermediate level of patent protection to safeguard small, incremental innovations.

However, plant and animal subject matter and the biological processes for their generation were excluded from the innovation patent system, due to concerns expressed by some industry sectors at the time.

The advisory council recommended that this exclusion should be maintained at this time. It felt there was a need to ensure there were no significant overlaps with the existing PBR regime.

The council observed: "The main argument for maintaining the exclusion for plants is that the PBR exceptions for use are critical for the success of the system. Breeders and farmers rely on having some access to protected plant material.

"Providing a parallel form of lower-level protection without the exceptions embodied in the PBR system would cause major disruption in the industry. Also, the granting of innovation patents without substantive examination is seen as a major cause of uncertainty. The lack of examination contributes to the perception that the innovation patent and the PBR systems overlap in the level of inventiveness and innovation."

The advisory council also noted: "The Department of Agriculture, Fisheries and Forestry and the Australian Centre for Intellectual Property in Agriculture argued that allowing innovation patents for animals would conflict with animal breeders" established frameworks of ownership of animals and their reproductive capabilities. This would cause great concern among a number of industries, such as horse racing, kennel clubs and livestock producers."

The advisory council recommended that the higher order standard patents should still remain available for plant and animal subject matter – especially in relation to biotechnological inventions.

The Federal Parliamentary Secretary for Industry, Warren Entsch MP, announced that the Government had accepted the recommendations of the Advisory Council.

The decision will ensure that the patent system and the PBR regime operate in mutual harmony, rather than in conflict and opposition.

Dr Matthew Rimmer is a senior lecturer at the Australian Centre for Intellectual Property in Agriculture, the Faculty of Law, the Australian National University. The Centre is funded by the GRDC.

For more information: Dr Matthew Rimmer, matthew.rimmer@anu.edu.au; Plant Breeder"s Rights Office, www.ipaustralia.gov.au/pbr/index.shtml. Advisory Council on Intellectual Property report ‘Should plant and animal subject matter be excluded from protection by the innovation patent?", November 2004, www.acip.gov.au/reviews.htm