Clarification of Plant Breeding Issues under the
Plant Breeder's Rights Act 1994
APPENDIX 1 - DEPARTMENT OF ATTORNEY GENERAL'S ADVICE ON 'DISCOVERY'
AUSTRALIAN GOVERNMENT SOLICITOR
7 November 2000
Mr Doug Waterhouse
Agriculture, Fisheries and Forestry - Australia
Plant Breeders' Rights Australia
Edmund Barton Building
BARTON ACT 2600
Dear Mr Waterhouse
Plant Breeder's Rights Act 1994 - 'Discovery'
- I refer to our previous discussions in relation to the above matter, and to your request for advice on the meaning of the expression 'discovery' in section 5 of the Plant Breeder's Rights Act 1994 (the Act), which provides as follows:
- A reference in this Act to breeding, in relation to a new plant variety, includes a reference to the discovery of a plant together with its use in selective propagation so as to enable the development of the new plant variety.
- If a plant is discovered by one person but used in selective propagation by another so as to enable the development of a new plant variety, those persons are together taken to be the joint breeders of the new plant variety.
- You have asked that in providing the advice we work through a series of 'primers', and these are addressed below.
Primer 1 - What is 'discovery'?
- The word 'discovery' in everyday usage has a number of different meanings. The word is not defined in the Act itself, nor has it been judicially interpreted in the context of the Act. The two rules of statutory interpretation of particular relevance are, firstly, that words should where possible be given their ordinary meaning, and secondly, that any part of an Act should be read in the context of the Act as a whole.
- The Shorter Oxford English Dictionary (3rd edition) relevantly defines 'discovery' as 'the finding out or bringing to light that which was previously unknown'. The words 'bringing to light' may suggest that discovery involves drawing attention to the thing discovered. This is also consistent with the Dictionary's other definitions of 'discovery' as the uncovering or disclosure of something not generally known.
- The Macquarie Dictionary (3rd edition) relevantly defines 'discovery' as 'something discovered', and defines 'discover' as 'to get knowledge of, learn of, to find out; gain sight or knowledge of (something previously unseen or unknown).' The words 'learn of' suggest that the thing discovered may only be new to the discoverer, and not to everyone. Also cited is the 'archaic' usage of discover to mean 'make known'.
- Efforts to define the word 'discovery' in tax legislation, where it generally refers to the 'discovery' of error or omissions in calculations, have favoured the natural or everyday meaning of the word, per Cohen LJ in Commercial Structures Ltd v Briggs (Inspector of Taxes)  2 All ER 1041 at 1049:
'If some other meaning is to be given to 'discover' than the natural meaning 'to find out', I should like to learn what it is.'
- A similar approach has been taken in Australia, in Francis v Commissioner of Stamp Duties (1953) 53 SR (NSW) 257, where Street CJ said at 263:
'To 'discover' means to obtain knowledge or to become aware of some fact or circumstances for the first time, in other words, as has been said in the English decisions, 'to find out'.
- However, the word must also be looked at the context of the Act as a whole, and in the context of a regime involving competing applications for intellectual property rights. This arguably imports some sense of novelty to the word; that the 'discovery' should not be new only to the discoverer. Support for this may be found in the requirement in sub-section 43(2) of the Act that a variety must be distinct from any other variety which is 'common knowledge'.
- From the wording of section 5, it is clear that discovery alone is not sufficient to found an application for PBR. It must be accompanied by selective propagation. This suggests that the bar for 'discovery' need not be set very high, and that, for instance, it need not of itself satisfy the requirements for an 'invention' in accordance with section 10 of the Act and paragraph 51(xviii) of the Constitution.
- This is consistent with the case law in relation to patents, which clearly distinguishes between a 'discovery' and an invention. So, for example, in the case of National Research Development Corporation v Commissioner of Patents (1959) 102 CLR 252 at 264 the Court acknowledged that mere discoveries are not patentable unless they are acted on in a way which produces something new and practical (as was the situation in that case):
'There may indeed be discovery without invention - either because the discovery is of some piece of abstract information without any suggestion of a practical application of it to a useful end, or because its application lies outside the realm of 'manufacture'.
- Discovery of an abstract piece of information without any suggestion of practical application may be equated with discovery of a plant without any suggestion that steps be taken to develop or propagate it.
- We have also considered whether 'discovery' might be said to refer to the particular properties of the plant, instead of the physical plant itself. However, given the distinct definitions of 'plant' and 'plant variety' in section 3 of the Act, we do not think that this is a viable interpretation.
- In our view, 'discovery' in section 5 means merely the act of finding a physical specimen of a plant which was previously unknown to the general public. In our view it need not be unknown to everyone, but there should be an element of bringing to light something which was not common knowledge. So, for example, a person might 'discover' the theory of relativity through their own efforts and ingenuity, but because it is common knowledge they could not claim it as their 'discovery'.
Primer 2 - How can a person claim to have discovered a plant?
- Under sub-paragraph 44(1)(b)(iii) of the Act, the Secretary must be satisfied that the applicant is entitled to make the application. Under sub-section 24(1), only a breeder of a plant variety may apply for a grant of PBR (or their assignee, under section 25). Breeding, in accordance with section 5 of the Act, includes (but is not limited to) the discovery of a plant together with its selective propagation.
- It is therefore incumbent upon the applicant to provide sufficient information in their application to satisfy the Secretary that they are the breeder of the plant variety. We note in this regard that section 26 of the Act requires the applicant to provide particulars, including at paragraph 26(1)(c) a statement that they are the 'breeder' of the plant, and at paragraph 26(1)(e) a description and photograph of a plant of the variety sufficient to distinguish it prima facie from plant varieties which are of common knowledge. Paragraph 26(1)(i) provides that the applicant must also supply details of an 'approved person' who can verify the particulars in the application.
- If the applicant is required to establish their 'discovery' of a plant, in order to show they are the breeder of a plant variety, then the Secretary needs to determine firstly, that the applicant found the plant, and secondly, that the plant is not generally known or of a variety already registered. The first premise should be able to be established from the applicant's own statement, noting that section 75(1) makes it an offence to make, knowingly or recklessly, a false statement in an application. The second premise will presumably be within the Secretary's own knowledge, on the basis that the plant will either be on the register or will be common knowledge.
- Either premise may be overturned by further evidence which the Secretary considers more compelling - for instance, information provided by an objector. However, on the basis that it is an offence under section 75(1) to make a false statement in support of an application, we do not consider that the Secretary need look behind the particulars supplied under section 26 unless he or she is given good reason to do so.
Primer 3 - Can discovery occur more than once?
- Your position is that discovery may occur more than once, and we agree. So long as the plant is not a matter of common knowledge, it is possible for more than one person to discover it. If, however, the plant becomes generally known, or is made known to a person, that person could not claim to have 'discovered' it. This is supported by the definition of 'breeder' in sub-section 3(1) of the Act, which anticipates in paragraph (b) that two persons may breed a plant independently.
Primer 4 - What can disqualify a person as a discoverer of a plant?
- Whether a person has discovered a plant is ultimately a question of fact. If the plant is of a variety which is already registered, or there is satisfactory evidence that the plant is common knowledge, then the person cannot claim to have discovered it. If the plant is not otherwise registered or known, and the applicant claims to have discovered it and provides adequate details of the discovery, this should be adequate to establish their right to make an application.
- Of course, if another person, such as an objector, provided evidence that the applicant had been informed of the plant or been provided with a cutting, or something similar, and could not be said to have 'discovered' it, the Secretary would have to weigh that information on its merits. In such a circumstance both parties should be made aware of sub-section 75(1) and the relevant penalty.
Primer 5 - Can discovery be disallowed simply by a claim that another person discovered the plant and informed the second person?
- Where one person has discovered the plant and informed a second, who conducted selective propagation, a joint application is appropriate under sub-section 24(3). The wording of sub-section 5(2) suggests that this will be a collaboration, an interpretation supported by the Explanatory Memorandum, which refers to 'the joint process of discovery and development of a new plant variety'.
- However, in the absence of a collaboration our view is that a mere claim that another person had discovered the plant and informed the applicant, who then used that information to obtain and propagate the plant, would not be sufficient without convincing evidence. Again, the provisions of section 75(1) mean that great care should be taken in assessing whether a person has deliberately provided false information under the Act, and an applicant's statements should not be lightly disregarded.
- Ultimately, if the evidence suggests that the allegation is true, then the applicant may fail to qualify as a 'breeder' and not be entitled to apply for PBR. However an unsupported assertion would in our view be insufficient to establish this.
Primer 6 - Is there a difference between discovering the plant and discovering characteristics hitherto unknown about the plant?
- In our view there is a difference, and the discovery of new characteristics in a plant variety does not amount to discovery of a plant under section 5. As discussed above, section 3 of the Act clearly defines 'plant' in terms of the broad types of botanical specimen which the word includes, whereas the expression 'plant variety' concerns the detailed characteristics of a botanical specimen. Discovering a plant merely means finding a physical example of a plant, and not discovering its particular characteristics.
- This view is consistent with section 45 of the Act, which provides that only one grant of PBR may be made in relation to a plant variety. Even if new characteristics of the plant were found, once the plant variety is registered it cannot be registered again. While the variety's characteristics are important in determining whether it is distinct, stable and uniform, as required by section 43, what those characteristics actually are is not relevant.
- This is supported by the interpretation of the word 'discovery' in the case of Beatty (Earl) v Inland Revenue Commissioners  2 All ER 758 at 761-2, per Vaisey J (although this case concerned the 'discovery' by the tax Office of a fault in a tax return), which suggests that discovery of a thing does not rest upon all understanding of its characteristics:
'It seems to me that this is a true analogy: - A man finds or discovers in his land a diamond. He thinks it is only a piece of glass, but, though he did not at first find out it was a diamond, he had in the true sense discovered it on the day that he found it. I think that the discovery need not be a complete and detailed or accurate discovery ... it is not necessary for them to have probed the matter to its depths or to define precisely the ground on which they have made the assessments ... [T]he commissioners, to revert for a moment to my analogy, thought that the diamond which they had found was only a piece of glass, but it was none the less a discovery.'
- If, however, the newly discovered characteristic means that the variety is not uniform or stable as was previously thought, there could be grounds for revoking the grant of PBR under section 50, as had the Secretary been aware of those facts at the time of making the grant he or she would have refused to make it.
Primer 7 - Can discovery be made of a plant that is owned by another person or which is on Crown land?
- In terms of the Act, there does not appear to be anything which would prevent discovery of a plant taking place on property which does not belong to the applicant, or which would prevent 'discovery' being made of a plant which physically belongs to someone else. These may raise other legal issues between the applicant and the 'owner', but the Act does not provide the avenues to deal with them. As we have discussed elsewhere, ownership of a physical specimen of a plant is quite distinct from ownership of the intellectual property rights in the plant variety, in the same way that a person may own a book without owning the copyright in the book.
Primer 8 - What should the PBR Office do to confirm discovery?
- In our view the PBR Office (acting for the Secretary) does not need to do anything to 'confirm' discovery except satisfy itself that the information provided by the applicant is sufficient to establish the discovery, and that it is appropriately verified by the person nominated under paragraph 26(2)(i) of the Act.
- On the basis that sub-section 75(1), already referred to, provides that to make, recklessly or knowingly, a false statement in an application, or otherwise under the Act, is an offence punishable by six months' imprisonment, we consider the Secretary should be able to assume the information provided by the applicant, and verified by the nominated 'approved person', is correct in the absence of evidence to the contrary.
- The Secretary is not required to look further than the application unless the Secretary finds the information provided to be insufficient, or unless some inconsistency or flaw gives rise to suspicion. In such a case the Secretary should seek further evidence from the applicant or the approved person.
- In the event that an objection is made, it is for the objector to provide the Secretary with evidence in support of the objection. If the objection does not include evidence, but only assertions, or evidence which is not convincing, then the Secretary may ask the objector for better evidence, but if the objector is unable to provide it then the Secretary is not required to establish the objector's case for them.
Primer 9 - Is discovery independent of the DUS criteria?
- Under section 43 of the Act, and under Article 5 of the UPOV Convention, in order for a plant variety to be registrable it must be distinct, uniform, and stable (the DUS criteria). 'Distinct' means that it must be clearly distinguishable from other known plant varieties, 'uniform' means its characteristics remain uniform upon propagation, and 'stable' means its characteristics remain stable after repeated propagation.
- We do not think that the DUS criteria have any bearing on the issue of 'discovery'. The DUS criteria relate to plant varieties, whereas discovery is merely of a plant. The DUS criteria would presumably be applied to the characteristics revealed or developed in the course of the selective propagation which must accompany discovery in order to amount to 'breeding' as defined in section 5.
Primer 10 - Can the discovery of a plant in the wild constitute a discovery under section 5?
- There appears to be no reason why the discovery of a plant in the wild would not constitute 'discovery' under the Act. Indeed, this seems like the type of circumstance where discovery of a hitherto unknown plant would be most likely to occur.
- In summary, we are of the view that 'discovery' merely means the finding of a physical plant which is not common knowledge. Where the plant is found does not impact on whether it has been 'discovered' under section 5.
Australian Government Solicitor
APPENDIX 2 - VARIETY OF COMMON KNOWLEDGE
A 'variety of common knowledge' (VCK) is not defined in the International Convention for the Protection of New Varieties of Plants 1991 (UPOV 1991). The 1961/72/78 revisions of the UPOV Convention, under Article 6, Conditions Required for Protection, state that 'the variety must be clearly distinguishable .... from any other variety whose existence is a matter of common knowledge at the time protection is applied for'. It then goes on to indicate how Common Knowledge may be established: ' ... by reference to various factors such as: cultivation or marketing already in progress, entry in an official register of varieties already made or in the course of being made, inclusion in a reference collection, or precise description in a publication'.
The Convention as revised in 1991 says at Article 7, Distinctness, 'The variety shall be deemed to be distinct if it is clearly distinguishable from any other variety whose existence is a matter of common knowledge at the time of the filing of the application'. It then goes on to add the single comment that: 'In particular, the filing of an application for the granting of a breeder's right or for the entering of another variety in an official register of varieties, in any country, shall be deemed to render that other variety a matter of common knowledge from the date of the application, provided that the application leads to a granting of a breeder's right or to the entering of the said other variety in the official register of varieties, as the case may be'.
The records of the discussions that took place at the UPOV 1991 Diplomatic Conference make it clear that the intention of this sentence was to clarify a particular situation that might exist in the case of two 'competing' PBR applications in different countries. It was not intended to be an exhaustive definition of what constitutes Common Knowledge, and the potential need for a much fuller set of examples was in fact raised.
This suggestion was not followed up, and, until recently, Article 7 was being taken as a complete definition, which gave rise to a number of misconceptions as to what constitutes a variety of Common Knowledge. Clearly Common Knowledge is always a legal matter upon which a national authority will rule.
UPOV Revisits Variety of Common Knowledge
Arising from very lengthy discussions, the UPOV Technical Committee is considering the following:
Varieties of Common Knowledge
Key aspects for determining whether a variety is a variety and moreover whether its existence is a matter of common knowledge are set out below. These considerations apply equally to all types of variety, whether protected or not, and include plant material such as ecotypes and land-races. Further developments and a more detailed explanation of the issues related to varieties of common knowledge are to be found in document TGP/3, 'Varieties of Common Knowledge'. (The Panel notes that at the time of this report TGP/3 was not drafted).
Criteria for a Variety
A variety whose existence is a matter of common knowledge must satisfy the definition of a variety set out in Article 1(vi) of the 1991 Act of the UPOV Convention, but this does not necessarily require fulfillment of the DUS criteria required for grant of a breeder's right under the UPOV Convention.
Existence of a Variety
Living plant material must be in existence for a variety to be taken into account for distinctness.
Specific aspects that should be considered to establish common knowledge include:
- Commercialization of propagating or harvested material of the variety or publishing a detailed description;
- The filing of an application for the grant of a breeder's right or for the entering of a variety in an official register of varieties, in any country, which is deemed to render that variety a matter of common knowledge from the date of the application, provided that the application leads to the grant of a breeder's right or to the entering of the variety in the official register of varieties, as the case may be;
- existence of living plant material in publicly accessible plant collections.
Common knowledge is not restricted to national or geographical borders.
In applying the notion of common knowledge in cases of dispute and particularly applications for a declaration of nullity, UPOV Contracting Parties are recommended to be prepared to take into account not only knowledge that exists in documented form, but also the knowledge of relevant communities around the world provided that this knowledge can be credibly substantiated so as to satisfy the standard of proof of the civil law courts.
The definition of 'variety' introduced in Article 1(vi) of the 1991 Act plays an important role in this context. The words 'irrespective of whether the conditions for the grant of a breeder's right are fully met' make it clear that commonly known varieties which are not protectable may, however, still be varieties which meet the criteria of Article 1(vi), from which a candidate variety must be clearly distinguished. This means, for example, that land races which are capable of satisfying the definition of 'variety,' and which can in consequence be defined and propagated unchanged should be regarded as varieties of common knowledge for distinctness purposes.
APPENDIX 3 - ABBREVIATIONS AND ACRONYMS
||Convention on Biodiversity
||Distinctness, Uniformity, Stability
||Essentially Derived Variety/ies
||Genetic Resource Centre
||Plant Breeder's Rights
||Plant Breeder's Rights Act 1994 as amended
||The Plant Breeder's Rights Advisory Committee
||Plant Breeder's Rights Office
||Plant Variety Rights Act 1987 as amended
||Standing Committee on Agriculture and Resource Management
||Convention of the International Union for the Protection of New Variety of Plants as revised in 1991
||Variety of Common Knowledge
 The Panel notes that debate on the existence of living material, as a qualifier for variety of common knowledge is ongoing.