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13 May 2019
What are plant breeders' rights?
What is UPOV?
When does a variety qualify for plant breeders' rights protection?
What is the term of a plant breeders' rights registration?
Who can apply for plant breeders' rights?
What are the rights of the holder?
When will plant breeders' rights be infringed?
Can applicants enjoy protection while their application is pending?
What is the effect of provisional protection?
Are renewal fees payable?
Do applicants have to submit plant material?
Are there any quarantine provisions?
Plant breeders' rights searches
Design novelty search
Design infringement search
Interpreting plant breeders' rights
South Africa does not have a plant patent system, as the Patents Act (57/1978) states that a patent will not be granted for any variety of plant. Therefore, new plant varieties are protected exclusively under the Plant Breeders' Rights Act (15/1976). However, genetically modified plants could be subject matter under the Patents Act as they are not strictly classed as new varieties of plants.
The International Union for the Protection of New Varieties of Plants (UPOV) is an intergovernmental organisation based in Geneva. UPOV was established by the International Convention for the Protection of New Varieties of Plants, which was adopted in Paris in 1961 and later revised in 1978 and 1991. The UPOV Convention aims to:
South Africa is a signatory of the Act of the UPOV Convention 1978 and the Plant Breeders' Rights Act was promulgated as a result of the convention's implementation. Under the UPOV Convention, member countries grant the same rights to persons of foreign member countries as they grant to their own.
UPOV also regulates the right to claim priority from an application that has been filed in another member country. This means that a plant breeders' rights application in a UPOV member country could form the basis for application in another UPOV member country, for the same variety, filed within one year.
In order to qualify for plant breeders' rights protection, a variety must be new, distinct, uniform and stable:
A variety is 'new' if propagating or harvested material thereof has not been sold or otherwise disposed of by, or with the consent of, the breeder for purposes of exploitation of the variety within certain time limits. If a variety has been disposed of in this fashion in South Africa, more than one year before the application's filing date, it is no longer new. In the case of applicants from other UPOV countries, for a variety to be new, an application must be made within six years for the registration of vines and trees or within four years in the case of other varieties from the date of first sale or other disposal in such a UPOV country. The Plant Breeders' Rights Act's definition of 'sell' include agreements to sell, offer, advertise, keep, expose, transmit, send, convey or deliver for sale or to exchange or dispose of to any person in any manner for a consideration. 'Sold' and 'sale' have a corresponding meaning. Thus, a mere agreement to sell propagating material or harvested material, as opposed to the actual sale thereof, can destroy the novelty of a variety as an agreement to sell is also included in the definition and deemed to be the same as 'sell'.
A variety is 'distinct' if, at the date of filing of the application for plant breeder's rights in South Africa, it is clearly distinguishable from any other variety of the same kind of plant of which the existence on that date is common knowledge.
A variety is 'uniform' if, subject to the variation that may be expected from the particular features of the propagation thereof, it is sufficiently uniform with regard to the characteristics of the variety in question.
A variety is 'stable' if the characteristics thereof remain unchanged after repeated propagation or, in the case of a particular cycle of propagation, at the end of each cycle.
Plant breeders' right are granted for 25 years in the case of vines and trees, and 20 years in all other cases. This is calculated from the date on which the registration certificate is issued.
An application for the grant of plant breeders' rights can be made by the breeder thereof. A 'breeder' is defined as the person who bred or discovered and developed the variety. If a variety was bred in the course and scope of the breeder's employment, the employer is regarded as the breeder.
An application for plant breeders' rights can be made only by a person who is a citizen of, or domiciled in, South Africa or a UPOV country. In the case of a legal person, they must have a registered office in South Africa or a UPOV country.
In the absence of licence agreements, a plant breeders' rights' holder has the exclusive right to undertake the:
However, a person that procures any propagating material of a variety in a legitimate manner will not infringe the plant breeders' rights in respect of the variety if they resell that propagating material or sell any plant, reproductive material or product which derived from that propagating material for purposes other than the further propagation or multiplication thereof. The same applies to:
The Plant Breeders' Rights Act also allows farmers who procure propagating material legitimately to retain and replant seed on the same land, but only for one season. Further, this right is limited to the particular farmer.
A plant breeders' right is infringed by any person that does not hold the right and performs or causes to be performed without a licence the following acts:
A licensee that fails to comply with any term or condition of a licence will also infringe the plant breeders' rights. It is also an infringement to use the approved denomination of a protected variety, in relation to plants or propagating material of any other variety, for any purpose or to sell plants or propagating material of a protected variety under any other denomination than the approved denomination of that variety.
While an application is pending, the registrar can issue a protective direction to the applicant. Such protective direction will be issued only if:
However, the holder of a protective direction is, notwithstanding an undertaking, entitled to sell or offer for sale reproductive material of the variety in question for the purposes of multiplication or testing, as well as harvested material which is not reproductive material. All reproductive material produced directly or indirectly during such multiplication or testing, as well as any unused reproductive material, will remain the property of the holder of the protective direction.
While a protective direction is in force, the variety in respect of which it was issued will be protected as if a plant breeders' right had been granted in respect thereof, and anything that would constitute an infringement of a plant breeders' right or be actionable in proceedings by the holder of such right will – if it is done with reference to a variety so protected – be actionable.
Renewal fees are payable annually, with the first fee being payable on or before 1 January of the year following the date on which a plant breeders' right is granted. Any subsequent annual fee will be payable before 1 January of each year. An extension of the six-month deadline for the late filing of the renewal fees is available on application and on paying an additional fee.
Plant material of the varieties in issue must be accessible by officers of the Department of Agriculture for evaluation within one year of the application's filing date. However, a time extension is available on request.
When importing plant material into South Africa, strict compliance with quarantine provisions is required. The quarantine period depends on the time of year and season when the plant material is received and whether a phytosanitary certificate accompanies the plant material. For example, should the plant material be imported, together with a phytosanitary certificate during, say July of one year, it could be released after one season during March the following year. However, if no phytosanitary certificate accompanies the plant material it would have to be cultivated through two seasons.
Every year a plant variety journal is published wherein the registered plant breeders' rights and the varieties on the national variety list are recorded.(2) From this plant variety journal, particulars such as the holder of the right, the registration number and the term of the registration can be obtained in respect of the plant breeders' rights registered for each plant type. Additional information on each registration can be obtained from the plant breeders' rights register and the application file.
Similar plant variety journals are published by other UPOV member countries.(3)
In South Africa the designs register is split into two sections. First, an aesthetic design protects an article's appearance, irrespective of the aesthetic value thereof (eg, mobile phone covers or automobile designs). An aesthetic design's duration is 15 years. Second, a functional design protects an article's appearance so far as is required for the article's function (eg, a paving stone or aluminium profiling). The functional design's duration is 10 years.
In addition, designs are grouped into different classes of technology and a design application may be filed in one or more classes to provide protection against infringing products which are in the same class. Notably, the protection is limited to articles that are in the same class for which the design has been registered.
A design novelty search is conducted to identify whether a design, for which registration is sought, has been anticipated by any prior art in the form of one or more similar registered designs.
In order to decide whether a design registration has been infringed, the representations and definitive statement, which are filed in support of the application for registration, must be construed to determine whether the alleged infringement falls within the scope of the registration.
Further, according to the courts, the state of the art at the time of the design's registration and the degree of novelty (and originality) that can be achieved by the registered design are also important factors. According to Homecraft Steel Industries (Pty) Ltd v SM Hare & Son (Pty) Ltd (1984 (3) SA 678 (A)):
if only small differences separate the registered design from what has gone before, then equally small differences between the alleged infringement and the registered design will be held to be sufficient to avoid infringement.
A limited prior art search must be conducted to determine the scope of protection afforded by the design registration. Accordingly, the registered design is compared with the prior art which is revealed by the search. Thus, if the step that is taken between the client's product and the registered design is greater than the step taken between the registered design and the prior art, the scope of protection of the registered design will be limited and the client's product will not fall within the ambit of the scope of protection which is afforded by the registered design.
One of the criteria for obtaining a valid plant breeders' right registration is that the variety must be distinctive. To be 'distinct', a variety must be clearly distinguishable from any other variety of the same kind of plant. Unlike patents – where a range of different embodiments of an invention could infringe a single claim with a relatively broad scope – in the case of plant breeders' rights, a registration is infringed only by the unauthorised actions contemplated in Section 23(1) and practised in respect of the protected variety. In other words, infringement takes place only if these reserved actions are applied in respect of a variety, which is not clearly distinguishable from the protected variety.
However, this is subject to the fact that the protection also applies to varieties:
A variety is deemed to be essentially derived from another variety if it:
To determine whether a particular variety infringes a protected variety, several techniques could be applied.
First, a copy of the application that was filed in support of the registration could be obtained and the protected variety's characteristics, as set out in the technical questionnaire and other documentation which was filed in support of the application, could be compared with the alleged infringing variety.
In addition, seeds of the protected variety could be obtained and comparative growth trials could be conducted under controlled conditions to compare the actual plants of the protected variety with actual plants of the alleged infringing variety. However, this could be time consuming and unsuitable for trees and vines.
Another method to determine infringement is to prepare unique DNA fingerprints of the protected variety and obtain plant material of the alleged infringing variety. Comparative DNA fingerprinting tests could then be conducted to determine objectively whether the alleged infringing variety is the same as the protective variety.
This will provide an answer as to whether the alleged infringing variety is clearly distinguishable from the protected variety. The question of whether an alleged infringing variety is an essentially derived variety is a question of fact. Thus, if the essentially derived variety is clearly distinguishable from the protected variety, comparative growth trials would not provide an answer in this regard but DNA fingerprinting tests might.
(1) More information about UPOV and its members is available here.
(2) The journal is available here.
(3) These variety journals are available from the respective plant protection offices, the particulars of which are available here.
The materials contained on this website are for general information purposes only and are subject to the disclaimer.
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