In a wide-reaching consultation paper, IP Australia has presented the Australian Government with a list of potential legislative reform proposals, and some preliminary views on how IP regulatory compliance may be streamlined and simplified, all with a view to improving productivity growth. The legislative reforms are intended to be relatively simple, uncontroversial, and able to be progressed in the short term.
This article focuses on the proposed Plant Breeder’s Rights (PBR) reforms. We have also discussed the proposed trade marks, patents, and design reforms in previous articles.
Exhaustion of PBR rights
PBR in a plant variety confers the exclusive right to deal in propagating material of the variety (or to license another person to do so). This right extends no further than the first sale of that material, subject to certain conditions. But there are competing judicial decisions governing this, being: Cultivaust Pty Ltd v Grain Pool Pty Ltd [2004] FCA 638 uses the ‘implied license’ doctrine which holds that a person may not infringe PBR in certain dealings with propagating material purchased from the rights holder, because authorization is implied in the purchase. Another, Calidad Pty Ltd v Seiko Epson Corporation [2020] HCA 41, uses the ‘exhaustion of rights’ doctrine which holds that a person may not infringe PBR in certain dealings with propagating material purchased from the rights holder, because rights are exhausted by the purchase. In the consultation paper, IP Australia does not state a preference for either doctrine but identifies confusion in the industry and seeks consultation from stakeholders as to what they prefer.
Given the High Court of Australia’s decision Calidad Pty Ltd v Seiko Epson Corporation [2020] HCA 41 in relation to patents, Griffith Hack supports the application of exhaustion of rights for PBRs, for consistency with other IP rights. Provisions relating to essentially derived varieties would continue to provide protection under the doctrine of exhaustion of rights.
Clarifying when propagating material = harvested material
PBR in a plant variety generally protects propagating material of the variety but it can extend to material harvested therefrom if the PBR owner did not already have the chance to exercise their right in the propagating material. But what if the harvested material is propagating material, e.g., barley seed – but it is not used for that purpose? Is it protected propagating material, or protected harvested material, or unprotected harvested material? IP Australia recognizes “significant uncertainty” in the industry and proposes to introduce legislation that establishes that all propagating material (including harvested) is protected irrespective of how it is used.
We suggest that the broader position that harvested material that is also propagating material still enjoys protection as propagating material, would be most practical.
Introducing a grace period for renewal fees
To maintain a granted PBR, annual renewal fees must be paid every year from the date of grant until the PBR expires. Currently it is a drop-dead deadline – there is no grace period for payment of a PBR renewal in Australia, which IP Australia acknowledges “creates a high risk of inadvertent lapses” and can result in “irreversible loss of rights”. It is proposed to introduce a 6-month grace period for payment of renewal fees. This would bring the PBR system precisely into line with this element of the patent system in Australia.
This welcome, and long-overdue change would bring PBRs in line with other IP rights.
Removing herbarium deposit requirements
For a PBR in a variety to be granted, propagating material must have been deposited in a genetic resource centre (GRC). An additional requirement is that a deposit is made to an official herbarium if the variety is indigenous to Australia. In the consultation paper, IP Australia recognises that the herbarium deposit requirement no longer serves its original function, and it proposes to relax the rules to make herbarium deposit optional for indigenous varieties, like it is for all others. It is suggested that this will “reduce cost and administrative delay” for PBR applicants.
A deposit in a GRC is likely to be sufficient to achieve the PBR policy objectives, while simplifying the process for breeders.
Having your say
A very short consultation period of 4 weeks is provided. Written submissions regarding the proposed legislative reforms and the policy issues, for some of which “preferred solutions are presented”, are invited by 2 April 2026 to https://consultation.ipaustralia.gov.au/.
This may be the only opportunity to change the thinking set out in this consultation paper.
If you’d like to discuss these possible changes and how they might impact you, or you would like us to lodge submissions on behalf of parties that wish to remain anonymous, please contact us here.
