Who Makes the Decision on EDV

Section 11 of the Plant Breeder's Rights Act sets out the exclusive rights given to the grantee, but the major value of the plant breeder's right is one of exclusion (see Sections 1.1 and 3.1 of this Guide]. So that, currently, if EDV were declared, the first breeder could exclude the second breeder from doing the acts established under section 11 and vice versa, meaning that neither breeder would be able to do the acts. Both breeders would be able to exercise the full extent of their rights, but effectively the new essentially derived variety could not be commercialised.

In Australia the decision to make a declaration of essential derivation is with the Secretary under Section 40 of the Plant Breeder's Rights Act 1994. The Secretary’s decision is appealable to the Administrative Review Tribunal. In other countries the Courts make this decision.

The Review of the Expert Panel on Breeding supports the view that the Courts should make the decisions relating to essential derivation as it sees no compelling reason for all Plant Breeder's Rights users to bear the cost of EDV actions by individuals seeking to protect their own interests.

Allegations of intellectual property impairment are routinely dealt with in the courts. Moreover, under other PBR systems, e.g. in Europe, allegations of EDV impairment is the responsibility of the judicial system. Courts are already equipped to deal with such disputes and action through the courts is a course that requires a serious cost/benefit analysis by both parties. Given the expense of maintaining structural capability to make judgments that would remain appealable, and accepted international practice that EDV challenges are a matter for the courts to decide, the Panel believes that the PBR Act should be amended to bring it into line with such international practice.

The Expert Panel observes that such a change would be more consistent with other aspects of the Plant Breeder's Rights Act 1994 (eg infringement of rights) for a court of competent jurisdiction to decide whether a declaration in respect of EDV should be made. Moreover, if EDV is extended to non-PBR varieties it will not be possible for the PBR Office to have jurisdiction over such disputes.

EDV does not hinder access to the existing variety for research and development, per se. What it does is provide protection for the first breeder if their variety is copied by providing a mechanism that enables the first breeder to effectively veto commercialisation of the EDV, or extract a rent for the use of their intellectual property.

	•	it is predominantly derived from the first variety; and
	•	it retains the essential characteristics that result from the genotype or combination of genotypes of the first variety; and
	•	it does not exhibit any 'important' (as distinct from cosmetic) features that differentiate it from the first variety.

	•	There are no definitions for the terms 'predominantly derived from', 'retaining the essential features of' etc, [an issue for all UPOV countries]
	•	There is no definition for the term 'important, more than cosmetic, features' [an issue unique to the Australian PBR Act]
	•	'important' would probably be taken to denote significant changes that affect performance, value or place in the market. For example, purple anthers in wheat, which do not affect performance or value of the crop, might fall into the category of a cosmetic feature.

	•	Defining 'essential characteristics' as 'heritable traits ... that contribute to the principal features, performance or value of the variety' (see Plant Breeder's Rights Act 1994 Section 3(1));
	•	Requiring that important differences (more than cosmetic) must be demonstrated if the second variety is not to be regarded as an EDV; and
	•	Stipulating that the PBR Office should make decisions in relation to a declaration that a variety is essentially derived.

In the Panel’s view decisions which determine whether a difference is important or clear should be made by UPOV or a court. However, this could not be done without expert input and it is not enough for the technical experts to hand it back to the legal system. Guidance is needed for plant breeders and the criteria will change as technology and social norms change; technologists, lawyers and the courts will need to develop guidelines and precedents to assist with this difficult area. At the end of the day the ultimate arbiter will be the Court, but hopefully based on some well developed policy decisions embodied in regulation.

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