“Breeders who make decisions without the benefit of patent attorneys’ advice risk not having the strongest protection for their rights and risk losing competitive advantages.” — Dr James-Robert Cram
Plant breeding sits at the intersection of science, agriculture, and global trade – an intersection where intellectual property settings can either enable innovation or quietly undermine it if poorly executed or misaligned. In Australia, where Agri-tech is both an economic mainstay and an export-facing industry, the design of the plant protection framework reflects a deliberate attempt to reconcile competing interests: rewarding breeders for innovation, preserving access for farmers, and maintaining alignment with international markets.
To achieve balance, Australia has positioned itself squarely in the middle of the three major plant-breeding rights regimes, eschewing the US patent-only model at one extreme and farmer-centric domestic schemes on the other. Australia favours a hybrid framework anchored in the 1991 version of the International Convention for the Protection of New Varieties of Plants (UPOV 1991) in combination with a patent system that allows patents on biotech traits, genes, and methods, and also the plants themselves.
“Our system recognizes that Agri-tech is a dominant economic force in Australia and that we must have a strong alignment with global standards and markets,” says Dr. Chris Vindurampulle, a Principal in the Melbourne office of Griffith Hack, a member of the IPH network.
Overlapping protections
In 1994, Australia enacted the Plant Breeder’s Rights Act (PBRA), establishing a sui generis regime for the protection of new plant varieties that gives effect to the standards reflected in the UPOV 1991 Convention. The PBRA protects plant varieties as such – defined by their combined genetic and phenotypic characteristics – rather than individual genes, traits or breeding technologies in isolation. Breeders are granted exclusive rights to produce, reproduce, condition for propagation, sell, import, and stock propagating material of the protected variety, with limited extension to harvested material where unauthorized use of propagating material has occurred. Protection extends to 25 years for trees and vines, and 20 years for other species.
The PBRA also features a breeder’s exemption, which lets breeders use protected varieties in their breeding programs if they do not commercialize the protected variety itself. And farmers may save seed from protected varieties and replant it, but only on their own farms: they may not sell, exchange, or use it for propagation by others.
Breeders can also seek patent protection under the Patents Act 1990, but plant-related inventions must meet the same criteria as any other inventions (i.e. novel, inventive and useful etc). Patents Act protection extends for 20 years.
“The systems are overlapping but not interchangeable,” Vindurampulle says. “The administrative processes are very different and so are the advantages you gain from achieving protection.”
One potential benefit of the hybrid system is that PBRA and patent protections, if both are available, need not run concurrently for their full terms but can partly overlap or even run sequentially.
“As a result, breeders can extend what would normally be the maximum term of protection under only one of the systems,” says Dr. James-Robert Cram, also a Principal in Griffith Hack’s Melbourne office. “So, for example, a breeder who has patent protection for a qualifying invention before obtaining a corresponding PBR might enjoy extended protection, say 30 to even up to 45 years of protection between the two rights.”
To self-file or not?
But even where dual protection is available, some breeders do not always take it up.
“Obtaining a PBR grant is often cheaper than applying for a patent, so a lot of companies see it as a satisfactory alternative,” Cram says.
Indeed, the PBRA allows self-filing by way of encouraging innovation among breeders big and small. But both Cram and Vindurampulle point out that self-filing without the aid of patent attorneys can deprive breeders of valuable input, including advice on:
- Deciding whether to file under the PBRA, the Patents Act, or both;
- The timing of filings;
- Ensuring maximum protection is in place;
- Breeding program protection through a succession of innovations;
- Understanding freedom to operate (FTO) risks; and
- The best use of available enforcement mechanisms.
“Breeders who make decisions without the benefit of patent attorneys’ advice risk not having the strongest protection for their rights and risk losing competitive advantages,” Cram says. “For example, there are critical factors before you seek protection: how important is this variety / innovation to your business; how big an advancement is it; what is your timeline to market and market longevity? Also, a patent claim might provide greater scope of protection than its corresponding PBR right. The protection strategy requires an early decision to maximise opportunities, because for example if you’ve progressed towards market without thinking about patents beforehand and now need one, it is probably too late to obtain the protection you need.”
AI’s impact
The advent of artificial intelligence in the invention process has added to the complexities, particularly in the patent system.
“The use of AI algorithms doesn’t change the way in which plant breeders and other stakeholders in the industry protect their rights, but it does create significant differences in what they can protect,” Vindurampulle says. “Even choosing whether to protect the AI or whether to keep it confidential is a significant and complex business decision for which specialist patent attorney advice is critical.”
Equally complex is the question of whether innovators must disclose the use of AI in creating their invention when applying for an Australian patent.
The issue originates with the disclosure requirements in Australia’s Patents Act: applicants must disclose the invention in a manner clear enough to allow a person skilled in the relevant art to perform it; they must also disclose the “best method known to the applicant of performing the invention”.
“So, the answer to the question of whether patent applicants must disclose AI use is, ‘It depends’”, Cram says. “The disclosure requirement is in relation to performing the invention, so if the AI used is necessary to, or the best way of, performing the invention, there may be an obligation to put that information into the patent specification.”
Otherwise, Cram says, there is no legal disclosure requirement in Australia.
“For example, there might be no legal disclosure requirement in Australia if you used AI in the discovery or design of your invention, but getting the invention to work doesn’t depend on the AI,” Cram explains.
Even if disclosure is not legally required, Cram and Vindurampulle note that the decision should be made in a broader commercial and IP-strategy context, particularly when weighing patent protection against keeping information as a trade secret. Relevant considerations include:
- Will disclosure create a market edge?
- Will disclosure attract investment or other partnering opportunities?
- Will disclosure help establish the “inventive step” requirement for obtaining a patent?
- Because AI cannot be an inventor on an Australian patent, will disclosure invite unnecessary scrutiny and rejections from examiners?
- Will disclosure risk the revelation of trade secrets? and
- Will non-disclosure impinge on the credibility of a patent application if an examiner discovers its use?
“The decision whether or not to disclose the use of AI in invention generation, when disclosure is not mandatory, requires inventors to balance all relevant factors and their commercial goals,” Cram says. “A patent attorney can help inventors make the right call.”
Julius Melnitzer is a Toronto-based writer who focuses on law, legal affairs, and the business of law. Follow him on LegalWriter.net or email him at julius@legalwriter.net.