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The Potential Impact of Patents on Australian Horticulture Industries

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The Potential Impact of Patents on Australian Horticulture Industries HAL/ACIPA 17/09 The Potential Impact of Patents on Australian Horticulture Industries HAL/ACIPA Publications: 1 Plant Breeder's Rights: A Guide for Horticulture Industries 2 Intellectual Property and the Commercialisation of Research and Development: A Guide for Horticulture Industries 3 What is Intellectual Property? Fact Sheet 4 Plant Breeder's Rights Fact Sheet 5 Closed Loop Contracts Fact Sheet 6 Plant Breeder's Rights and Patents for Plants: A Compendium of Key Case Law for the Horticulture Industries in Australia 7 Farm-saved Propagating Material in Horticulture Fact Sheet 8 End Point Royalties Fact Sheet 9 Biodiscovery Fact Sheet 10 Intellectual Property for Horticulture: An Overview 11 Commercialisation and Adoption of Horticultural Research Workshop Materials 12 Copyright and the Australian Horticulture Industries Fact Sheet 13 Patents for Plants Fact Sheet 14 Branding: The Use of Trade Marks in Horticulture Fact Sheet 15 Naming Plants Fact Sheet 16 Applying for Intellectual Property Rights for Plant Innovations in Australia and Overseas Handbook 17 The Potential Impact of Patents on Australian Horticulture Report For further information or to obtain copies, contact ACIPA: Em: [email protected] Ph: 07 3346 7506 The Potential Impact of Patents on Australian Horticulture Industries This Handbook was prepared independently by the Australian Centre for Intellectual Property in Agriculture with funding from Horticulture Australia Limited (Project HG07052 ‘The Potential Impact of Patents on Australian Horticulture’ 2007-2009). ACIPA 2009 DISCLAIMER This document was created for educational purposes only. It does not constitute legal advice. No person should rely on the contents of this publication and should seek their own independent advice, including legal advice, from a qualified professional. Neither HAL nor ACIPA will be responsible in any way whatsoever to any person or corporation that relies on the information in this publication, or for the views expressed and conclusions reached in this publication. ACIPA is based at: The University of Queensland Griffith University The Australian National University Authors: Jay Sanderson and Stephen Hubicki, Research Fellows in the Australian Centre for Intellectual Property in Agriculture. Acknowledgements: The authors acknowledge the contribution of the Steering Committee which consisted of Garry Fullelove, Brian Chung and Philip Roeth. Front cover image: Hakea photo © Mary Okello 2009 Contents ABBREVIATIONS ......................................................................................................... i GLOSSARY ................................................................................................................. ii 1.0 Executive Summary ........................................................................................... 1 1.1 Scope of the Report: Patent Law ............................................................................. 1 1.2 The use of Case Examples ...................................................................................... 2 1.3 Structure of the Report ............................................................................................. 3 1.4 Number of Patent Applications ................................................................................. 5 1.5 Consequences of a shift to patent law ..................................................................... 5 2.0 Introduction ........................................................................................................ 9 2.1 The patentability of plants ...................................................................................... 10 2.1.1 The patentability of plants in Australia ........................................................ 11 2.1.2 The patentability of plants in the United States .......................................... 13 2.1.3 The patentability of plants in Europe .......................................................... 16 2.2 Confidential Information ......................................................................................... 20 2.2.1 What is confidential information? ................................................................ 21 2.2.2 How to protect information .......................................................................... 21 2.2.3 Can plant related innovations be kept confidential? ................................... 24 2.2.4 Protecting methods (eg extractive) through confidentiality ......................... 25 3.0 The number and types of patents in the United States, Europe and Australia 27 3.1 United States .......................................................................................................... 28 3.2 Europe .................................................................................................................... 29 3.3 Australia ................................................................................................................. 29 3.3.1 Plant Breeder’s Rights Applications ............................................................ 30 3.3.2 Patent Applications ..................................................................................... 30 4.0 Consequences of shifting to patents and confidential information ................... 35 4.1 Considerations for breeders/researchers ............................................................... 35 4.1.1 Can a researcher’s innovation be protected by patents? ........................... 36 4.1.2 If researchers obtain a patent, what level of protection do they get? ......... 36 4.1.3 Does research or breeding infringe another person’s patent? ................... 37 4.1.4 What is a compulsory licence? Can researchers/breeders get a compulsory licence? .................................................................................................................. 43 4.1.5 Is it more expensive to access patented materials? ................................... 43 4.1.6 Can researchers publish the results of their research? Can researchers freely conduct research? ........................................................................................ 44 4.1.7 Can an inventor use their invention before they lodge a patent application? . .................................................................................................................... 44 4.1.8 Should breeders/researchers use confidentiality or patent? Or both? ....... 45 4.1.9 Should researchers/breeders have a confidentiality agreement? .............. 45 4.1.10 What should be included in a confidentiality agreement? .......................... 45 4.1.11 What, if any, effect will patenting have on commercialisation? .................. 46 4.1.12 What are the cost and time considerations of patenting? ........................... 47 4.2 Considerations for growers .................................................................................... 49 4.2.1 Are there any post-sale restrictions on patents? ........................................ 49 4.2.2 How does the doctrine of implied licence relate to propagating material? . 50 4.2.3 Can a grower save propagating material? .................................................. 52 4.2.4 Will the cost of patented material be more expensive? .............................. 52 4.2.5 Will using patented material affect farm management practices? .............. 52 5.0 Conclusions ..................................................................................................... 54 APPENDIX 1: An overview of patent law .................................................................. 56 APPENDIX 2: Typical Steps in Getting and Maintaining a standard patent (section 4 Patents Act 1990 (Cth)) ............................................................................................. 71 APPENDIX 3: Extract from US Plant Patent PP17, 770 P3, ‘Mango tree named “B74”’......................................................................................................................... 73 APPENDIX 4: Extract from Australian Plant Breeder’s Rights Application for the mango variety ‘B74’ ................................................................................................... 76 REFERENCES .......................................................................................................... 82 SUBJECT INDEX ...................................................................................................... 86 ABBREVIATIONS ACIP Advisory Council on Intellectual Property ACIPA Australian Centre for Intellectual Property in Agriculture ALRC Australian Law Reform Commission Cth Commonwealth CLIMA Centre for Legumes and Mediterranean Agriculture EPC 2000 European Patent Convention EPO European Patent Office GM Genetically modified GMO Genetically modified organism HAL Horticulture Australia Limited IP Intellectual Property NRDC National Research Development Corporation PBR Plant Breeder’s Rights PCT Patents Cooperation Treaty PPA Plant Patent Act PVPA Plant Variety Protection Act 1970 PVR Plant Variety Rights TRIPs Trade-Related Aspects of Intellectual Property Rights UPOV International Convention for the Protection of New Varieties of Plants USPTO United States Patent and Trademark Office WIPO World Intellectual Property Organization WTO World Trade Organization i GLOSSARY Common General Knowledge In patent law, the background knowledge and experience against which inventive step is assessed. Compulsory Licence A compulsory licence requires the patentee to grant the applicant a licence
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