Kiwi fruit

The definition of what a vine is when it comes to plant breeder’s rights has been expanded following submissions by Griffith Hack on behalf of a client seeking intellectual property protection for a new variety of kiwifruit.

Until recently, a “vine” was interpreted by the Plant Breeder’s Rights (PBR) Office of IP Australia to mean only a grapevine of genus Vitis.

But following Griffith Hack’s submissions, the PBR Office reconsidered its interpretation of “vine” as used in the PBR Act and now recognises as a vine Actinidia (kiwifruit), in addition to Vitis (grapevine), as well as Bougainvillea, Campsis, and Hedera genera.

This gives plant breeders more time to apply for protection in Australia, and once granted, gives a greater duration of protection, because PBR for trees and vines affords 25 years’ protection, rather than 20 years’ protection for all other plants.

 This means that the deadline for filing an Australian PBR application for a plant variety of any of these four additional genera is now six years, rather than four years, from the date of first overseas sale of the plant variety in line with that afforded to grapevines.

This gives plant breeders more time to apply for protection in Australia, and once granted, gives a greater duration of protection, because PBR for trees and vines affords 25 years’ protection, rather than 20 years’ protection for all other plants.

Under the Plant Breeder’s Rights Act 1994 (PBR Act), a PBR applicant may obtain PBR in Australia for a new plant variety that has been recently exploited, i.e. sold, overseas.

The definition of “recently exploited” means applying for PBR (i) in the case of trees or vines – not more than six years after the date of first overseas sale, or (ii) in any other case – not more than four years after the date of first overseas sale. Notably, “vines” is not defined in the PBR Act.

In February 2017, Griffith Hack filed for a foreign client a PBR application for a new variety of kiwifruit, which is commonly accepted in the art and the scientific literature as a vine.

However, the kiwifruit variety had been sold overseas more than four years, but fewer than six years, before the date of filing the PBR application.

Shortly after, in February 2017, we received an examination report from the PBR Office stating that:

“The date of first overseas sale falls outside the 4 years recent exploitation period under the section 43(6) of the Plant Breeder’s Rights Act 1994 and makes this variety ineligible for the grant of PBR.”

We learned that this was because the PBR Office interpreted “vines” as referring only to grapevines, by reference to the French text of the Union for the Protection of New Varieties of Plants (UPOV) Convention with which the PBR Act is compliant.

We responded in March 2017 by pointing out that kiwifruit is generally considered a vine, and that the PBR Act and the Plant Breeder’s Rights Regulations 1994 are completely silent as to any qualification of the term “vine”.

In response, in July 2017, the PBR office reiterated its position by formally stating that:

“IP Australia has considered this issue thoroughly and our interpretation of the Plant Breeder's Rights Act 1994 (the Act) is that in consideration of the original French text of the UPOV 1991 Convention, the correct interpretation is that the term “vine” (“la vigne” in French) can only be applied to grapevines (Vitis vinfera) or the hybrids thereof. The original French text of the UPOV convention prevails if there is any ambiguity in the translation process.”

And concluded that:

“the date of first overseas sale of this variety falls outside the 4 years recent exploitation period under the section 43(6)(b)(ii) of the Act and makes this variety ineligible for the grant of PBR.”

The PBR Office went on to assert that:

“It is appropriate in the exercise of statutory interpretation where there exists an undefined term capable of several interpretations to refer to the remainder of that legislation and/or any relevant extrinsic materials (ie any Explanatory Memorandums, 2nd Reading speeches of parliament, the rationale for the introduction of that provision and/or any ministerial announcements, international convention etc.). In this case, I have considered the original French text of the UPOV Convention as a relevant factor with considerable weight to the correct interpretation of whether a kiwifruit is a “vine” for the purposes of the Act.”

Curiously, the PBR Office relied only on the French text of the UPOV Convention, despite its explicit reference to “Explanatory Memorandums, 2nd Reading speeches of parliament, the rationale for the introduction of that provision and/or any ministerial announcements, international convention etc.”

We were invited to make submissions within one month of the PBR Office’s letter, otherwise the PBR Office would take action to formally refuse the PBR application.

Accordingly, in August 2017 we made detailed submissions setting out the following:

  • the PBR Act is clear on its face, there is no ambiguity in the word “vines”, and the word “vines” is to be applied broadly to include kiwifruit (Actinidia);
  • the drafters of the PBR Bill had every opportunity to recite the word “grape-vine” thereby restricting the legislation, but elected not to;
  • it is illogical and circular to avoid the direct translation of the French text of the Convention (i.e. “grapevine”) in the statute, but then to rely on the French text for statutory interpretation (i.e. of the word “vines”);
  • if there is any doubt, the domestic legislative history and extrinsic materials demonstrate that “vines” is a plain English word and that there was no intention that the word “vines” be read restrictively;
  • the international extrinsic materials demonstrate that the Convention sets a minimum threshold for protection of plant varieties, not a maximum threshold, so a broad reading of “vines” is entirely permissible and compliant, for example, New Zealand PVR legislation;
  • the international extrinsic materials demonstrate that “vines” has common usage internationally and should be read broadly;
  • UPOV itself encourages broad application of the word “vines”.

Finally, on 9 November 2017, Griffith Hack received formal notification that in view of our submissions regarding the PBR application for the kiwifruit variety, the PBR Office has reconsidered its interpretation of “vine” as used in the PBR Act and now recognises Actinidia (kiwifruit) as a vine, in addition to Vitis (grapevine).

Furthermore, the PBR Office now also recognises as vines Bougainvillea, Campsis, and Hedera genera. This means that the deadline for filing an Australian PBR application for a plant variety of any of these five genera is six years from the date of first overseas sale.

Accordingly, in a win for our client, its PBR application for a new variety of kiwifruit was timely filed and will proceed to acceptance.

As noted above, other breeders of Actinidia, Bougainvillea, Campsis, and Hedera vines can take advantage of this change, which provides a greater period of time in which to consider pursuing PBR in Australia after sale overseas, and once granted, provides five years of additional protection.

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