Australia: Intellectual Property (IP) Rights for plants in Australia

Last Updated: 13 February 2015
Article by Jacinta Flattery-O'Brien

In Australia, new plant varieties can be protected by both Plant Breeder's Rights (PBR) and patents. The form of protection which is most appropriate for a given plant variety will require a consideration of the rights provided by each, and the requirements that must be met to obtain them.

Why protect plants in Australia

Agriculture is recognised by the Australian government as being one of the "five pillars" of the national economy. In 2013-14 Australian farm production was valued at just over $50 billion, with the largest contribution coming from wheat.1

The majority of Australia's agricultural output is exported. Our unique global position allows counter seasonal supply to northern hemisphere markets and our proximity to Asia enables us to capitalise on the market demands of the growing Asian middle class. Indeed, in response to growing demand from Asia, the Australian Government has set an ambitious goal of doubling Australia's agricultural output by 2030.2 Strengthening this push is the recently announced free-trade agreement with China, which will see a significant reduction of tariffs for Australian produce.

The Australian plant breeding industry has seen dramatic developments over the last 15 years, from one which was predominately government funded to one which is almost entirely privatised. Over the same period, major investments have been made in Australia by multinational companies such as BASF Plant Science, Monsanto, Dow AgroSciences, Pioneer Hi-Bred, Syngenta and Bayer CropScience. Not surprisingly, therefore, there has been a rapid increase in IP rights being sought for new plant varieties.

The figures below provide a general overview of the major applicants for Australian patents in the field of plant science (IPC code A10H) and the most common words found in the abstracts of these patents in January 2015.

AU patent applicants Abstract keywords

The two main options available for protecting new plant varieties in Australia are patents and PBR. Other commercially useful forms of protection include trade marks, copyright and contracts. This article provides a brief overview of the requirements for patenting and obtaining PBR for new plant varieties in Australia.

A. Plant Breeder's Rights

Statutory protection of plant varieties is provided by the Plant Breeder's Rights Act 1994 (Cth) ("PBR Act"), which was implemented in accordance with Australia's obligations under International Convention for the Protection of New Varieties of Plants of 1991 ("UPOV Convention").

Plant varieties may be protected under the PBR Act if:

  1. the variety is distinct from any other variety whose existence is a matter of common general knowledge;
  2. the variety is uniform; and
  3. the relevant traits remain unchanged after repeated propagation.

The protection afforded by PBR relates primarily to propagating material and includes the exclusive rights to:

  1. produce or reproduce the material;
  2. condition the material for the purpose of propagation;
  3. offer the material for sale;
  4. sell the material;
  5. import the material;
  6. export the material; and
  7. stock the material for any of the preceding purposes.

However, certain uses of the propagating material are exempt from infringement including the use of the propagating material for private and non-commercial purposes, for experimental purposes and for further breeding ("breeder's exemption"). Another important exemption, known as the "farm-saved seed exemption", allows farmers who have legitimately obtained PBR-protected material to further propagate the material for the purposes of planting a new crop.

The farm-saved seed exemption is a disincentive to plant breeding but is nonetheless implemented by many signatories of the UPOV Convention, including Australia. The limitations of this exception are, to a certain degree, mitigated in Australia by our end-point royalty ("EPR") system, which requires the payment of royalties at the first point of sale of material harvested from protected varieties. Compared to the seed-point royalty system found in many other countries, the EPR system is credited as being a more equitable form of compensation, as it involves a sharing of risk between the breeder and the grower. However, the EPR system contains many inefficiencies resulting from transactions between entities that are liable under the PBR Act and entities that are not.

Notwithstanding the above limitations, PBR continue to provide a necessary and valuable form of protection for many new plant varieties in Australia. For more information about PBR and how to apply for PBR in Australia, click here (

B. Patents

In addition to avoiding the breeder's exemption and the farm-saved seed exemption, patents offer broader protection for plants than PBR. Patent claims may be directed not just to propagating material, but also to other parts of the plant and, of course, to the entire plant itself. Importantly, claims can also cover methods of producing the plant and the use of the plant.

Patent law in Australia differs from that of the US and Europe, with the overall effect that protection for plant varieties in Australia is more liberal than in those jurisdictions. Some of the differences are discussed below.

Patentable subject matter

In the landmark decision of NRDC v Commissioner of Patents of 1959 (102 CLR 252), it was held that patentable subject matter could be defined as that which results in "an artificially created state of affairs" and which provides "an economically useful result". The effect of this decision is to define patentable subject matter in a manner which can be adapted to new technology as it develops. Importantly, this definition also means that biological material, including plants, represents patentable subject matter. More recently, the Australian courts confirmed that there is "no intrinsic impediment to the patentability of plant varieties" (Grain Pool of Western Australia v Commonwealth of Australia (2000) 202 CLR 479).

Plants are also eligible for patent protection in the US, although this may change following a recent decision by the US Supreme Court3. In the equivalent Australian case, the enlarged bench of the Full Federal Court of Australia unanimously held that genetic material represents patentable subject matter, confirming Australia's position that there is no inherent restriction to the patenting of biological material.

Unlike Europe, where plant varieties are excluded from patent protection (although plants per se are not excluded), Australia does not exclude claims directed to a new plant variety. Further, Australia allows claims to "essentially biological processes" for the production of plant varieties. Consequently, an Australian standard patent may include claims directed to a plant variety, a plant per se and a method for its production.

Inventive Step

The standard for establishing an inventive step is significantly lower in Australia compared to Europe and the US. The case law in Australia requires that the prior art "directly lead" the skilled person as a matter of course to pursue one avenue in the expectation that it might well produce the claimed invention. In contrast, the European test, which has also been applied in the United States, is whether the invention would have been "obvious to try" with a reasonable expectation of success. As noted by the Intellectual Property Office of Australia4, the "obvious to try" approach sets a higher threshold for inventive step as it permits a greater level of routine testing and the combination of approaches in order to solve a particular problem. Furthermore, it remains the case in Australia that only a "scintilla" of inventiveness is required to satisfy the requirements for inventive step.

Assuming that plant breeding methods are inherently non-inventive is a mistake that has led many to believe PBR are the only form of protection applicable to a "conventionally bred" plant variety. Although there is no case law in Australia specifically dealing with the issues of plant breeding and inventive step, it is clear that conventionally bred plants can meet the requirements of inventive step in Australia. Common indicators of an inventive step in plant breeding are a new and unexpected result or the use of breeding methodologies that extend beyond routine experimentation.


Official fees associated with patenting are about 1.25 times greater than those for PBR protection over a 20-year term. Of course the costs associated with obtaining patent protection will increase where prosecution is extended and more attorney time is required. On the other hand, the costs associated with PBR applications can also increase, for example where field trials are required.


With the rapid emergence of new technologies and the growing demand for Australian produce from our Asian neighbours, IP is certain to play an increasingly important role in protecting agricultural innovation in Australia. PBR and patents are both commercially valuable assets for maximising the return on investment made in developing new plant varieties.

The somewhat lower level of protection afforded by PBR aims to account for the often lower levels of inventiveness that plant breeding involves. However, it does not follow that a plant variety which meets the statutory requirements for protection under the PBR Act is prohibited from patent protection. As discussed above, there is no intrinsic bar to patentability for inventions relating to plants. Rather, plants are subject to the same patentability requirements as an invention from any other field of technology. Accordingly, it is well worth considering both types of protection in Australia as a patent affords broader protection while PBR may be less vulnerable to an invalidity challenge. Both forms of protection last for 20 years (or 25 years in the case of PBR for trees or vines).


1 Australian Bureau of Agricultural and Resource Economics and Sciences, Agricultural Commodities September Quarter 2014.

2 The Coalition's 2030 Vision for Developing Northern Australia, June 2013.

3 Association for Molecular Pathology v Myriad Genetics Inc 596 US 12-398 (2013).

4 IP Australia, Getting the Balance Right: Towards a Stronger and More Efficient IP Rights System, March 2009.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

Shelston IP has been awarded the MIP Global Award for Australian IP Firm of the Year 2013.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Jacinta Flattery-O'Brien
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .


    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions