Plant Varieties Rights live on...

Date: 2011-06-07
Author: Tom Gumley

Elders Rural Services Australia Limited v Registrar of Plant Breeder’s Rights [2011] FCA 384 has highlighted that not all PVRs made under the old Plant Varieties Act 1987 (the old act) are transferred to the new scheme enacted by the Plant Breeder’s Rights Act 1994 (the new act). This decision takes a close look at the new act’s transitional provisions (Sections 82 and 83) and their application to PVRs made prior to the commencement of the new act in November 1994.

This was relevant to the issue of whether an application for a new potato variety accepted under the old act but not yet granted by November 1994 would be entitled to the term under of the new act (ie 20 years from grant) on the basis that the application was granted under the new act. An application granted under the old act would otherwise have the term of 20 years calculated from the date of acceptance. The time period between acceptance and grant for either PBR or PVR application can be many years, so the act under which the right is granted can have a significant impact on the term of the right.

Section 82 addresses a first circumstance, whereby a PVR has been granted under the old act and remains in force at November 1994. In short, section 82(1) provides that those rights granted under the old act have effect of being granted under the new act. However, Section 82(2) limits the duration of the rights granted under the old Act to the duration given by the old Act, ie 20 years from the date of acceptance of the application.

Section 83(1) addresses a second circumstance where an application for a PVR had been made (but not accepted) under the old act but had not been disposed of under that act before November 1994, and provides that the provisions of the old act continue to apply up to the stage of the grant of the PVR.

“When the provisions of the old act and the new act are considered, it becomes apparent that an application for a PVR made under the old act which had not been disposed of at the time of the enactment of the new act must be decided by reference to the old act and what is granted are plant variety rights under the old act and not PBR under the new act. The new act’s transitional provisions and in particular s83 allows the old act to continue to apply up to the stage of the grant of rights. The expression in s83(1) “for the purpose of dealing with the application, and any objection that has been made before that day, or is made after that day, in relation to the application” means dealing with the application under the old act” [at p63]

The remaining issue here is whether section 83(1) also applies to applications accepted under the old act but not yet granted. Lander J reasoned that since an accepted application had yet to be disposed of under the old act, such an application would still be subject to the provisions of the old act and therefore granted under the old act: ” The new act could not apply; first because of the provisions of s83 itself; and secondly, because the provisions of the new act which govern applications only under the new act” [at 65] Accordingly, such an application (even when granted once the new act is in force) would have the same term as if granted under the old act, ie 20 years from the date of acceptance of the applications.

Unfortunately, an anomaly arises out of this interpretation which means that the transitional provisions do not apply to applications under the old act caught between acceptance and grant at the time the new act was enacted: “it follows that a person whose application had not been granted at that time of the new Act is only entitled to a PVR, notwithstanding that a person whose application had been granted prior to the new act and whose rights were still in force is still entitled to PBR as if the new Act were in force at the time that the plant variety rights were granted”[at77]. The only right such an applicant obtains under the new act was to have its application under the old act considered and if the Secretary was satisfied the grant of a PVR under the old act.

Practically speaking, this means that any applications accepted under the old act not disposed of (or granted) before November 1994 would continue to be treated under the old act.