Elders Rural Services Australia Limited v Registrar of Plant Breeder's Rights
[2011] FCA 384
•19 April 2011
FEDERAL COURT OF AUSTRALIA
Elders Rural Services Australia Limited v Registrar of Plant Breeder’s Rights [2011] FCA 384
Citation: Elders Rural Services Australia Limited v Registrar of Plant Breeder’s Rights [2011] FCA 384 Parties: ELDERS RURAL SERVICES AUSTRALIA LIMITED (ACN 004 045 121) and CAITHNESS POTATO BREEDERS LIMITED v REGISTRAR OF PLANT BREEDER'S RIGHTS and SECRETARY OF THE DEPARTMENT OF INNOVATION, INDUSTRY, SCIENCE AND RESEARCH OF THE COMMONWEALTH GOVERNMENT OF AUSTRALIA File number: SAD 166 of 2010 Judge: LANDER J Date of judgment: 19 April 2011 Catchwords: INTELLECTUAL PROPERTY – Plant Breeder’s Rights and Plant Variety Rights – scope of operation of transitional provisions in Part 9 of the Plant Breeder’s Rights Act 1994 (Cth) – effect of s 83 of the Plant Breeder’s Rights Act 1994 (Cth) – whether an application for plant variety rights made under the Plant Variety Rights Act 1987 (Cth) which has not been disposed of at the time of the enactment of the Plant Breeder’s Rights Act 1994 (Cth) is to be decided by reference to the Plant Variety Rights Act 1987 (Cth) or the Plant Breeder’s Rights Act 1994 (Cth) – whether the applicant acquired plant breeder’s rights under the Plant Breeder’s Rights Act 1994 (Cth) in respect of an application for plant variety rights made under the Plant Variety Rights Act 1987 (Cth) which had been accepted but not granted at the time the Plant Breeder’s Rights Act 1994 (Cth) came into force
INTELLECTUAL PROPERTY – Plant Breeder’s Rights and Plant Variety Rights – duration of a grant of plant variety rights – whether a grant of plant breeder’s rights under the Plant Breeder’s Rights Act 1994 (Cth) in respect of an application made under the Plant Variety Rights Act 1987 (Cth) enjoys a term of 20 years from the date of acceptance or 20 years from the date of grant
STATUTORY INTERPRETATION – power of the Court to interpret legislation as if additional words were included – whether the words “save that a successful applicant will be granted PBR pursuant to the provisions of the Act” should be added to end of s 83 of the Plant Breeder’s Rights Act 1994 (Cth)
Legislation: Evidence Act 1995 (Cth) ss 191(2), 191(3)
Plant Variety Rights Act 1987 (Cth) ss 9, 12, 15, 16, 17, 18, 19, 20, 22, 26, 27, 32, 35, 36, 40, 41, 43
Plant Breeder’s Rights Act 1994 (Cth) ss 3, 11, 12, 13, 14, 15, 20, 24, 25, 26, 27, 30, 34, 35, 37, 39, 44, 46, 47, 61, 82, 83Cases cited: Inco Europe Ltd v First Choice Distribution (a firm) [2000] 1 WLR 586 referred to
Minister for Environment, Heritage and the Arts v PGP Developments Pty Limited (2010) 183 FCR 10 referred toDate of hearing: 21 February 2011, 7 March 2011 Date of last submissions: 24 February 2011 Place: Adelaide Division: GENERAL DIVISION Category: Catchwords Number of paragraphs: 88 Counsel for the Applicants: Dr C Bleby with Mr S Phillips Solicitor for the Applicants: Lipman Karas Counsel for the Respondents: Mr G McGowan SC Solicitor for the Respondents: Australian Government Solicitor
IN THE FEDERAL COURT OF AUSTRALIA
SOUTH AUSTRALIA DISTRICT REGISTRY
GENERAL DIVISION
SAD 166 of 2010
BETWEEN: ELDERS RURAL SERVICES AUSTRALIA LIMITED (ACN 004 045 121)
First ApplicantCAITHNESS POTATO BREEDERS LIMITED
Second ApplicantAND: REGISTRAR OF PLANT BREEDER'S RIGHTS
First RespondentSECRETARY OF THE DEPARTMENT OF INNOVATION, INDUSTRY, SCIENCE AND RESEARCH OF THE COMMONWEALTH GOVERNMENT OF AUSTRALIA
Second Respondent
JUDGE:
LANDER J
DATE OF ORDER:
19 APRIL 2011
WHERE MADE:
ADELAIDE
THE COURT ORDERS THAT:
1.The application be dismissed.
Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using Federal Law Search on the Court’s website.
IN THE FEDERAL COURT OF AUSTRALIA
SOUTH AUSTRALIA DISTRICT REGISTRY
GENERAL DIVISION
SAD 166 of 2010
BETWEEN: ELDERS RURAL SERVICES AUSTRALIA LIMITED (ACN 004 045 121)
First ApplicantCAITHNESS POTATO BREEDERS LIMITED
Second ApplicantAND: REGISTRAR OF PLANT BREEDER'S RIGHTS
First RespondentSECRETARY OF THE DEPARTMENT OF INNOVATION, INDUSTRY, SCIENCE AND RESEARCH OF THE COMMONWEALTH GOVERNMENT OF AUSTRALIA
Second Respondent
JUDGE:
LANDER J
DATE:
19 APRIL 2011
PLACE:
ADELAIDE
REASONS FOR JUDGMENT
The second applicant is a company incorporated in the United Kingdom and is a title holder of plant breeder’s rights in respect of the potato variety, “Nadine”.
The first applicant (Elders) is a company incorporated in Australia and registered in Victoria. On or about 1 July 1998 Caithness granted to Elders an exclusive head licence for the production and marketing of Caithness’ potato variety (Nadine) in Australia. Subsequently, Elders became the registered agent for Caithness in respect of its plant breeder’s rights in Nadine.
On 21 May 1992 Caithness made an application for the grant of plant variety rights in respect of the Nadine potato variety under the Plant Variety Rights Act 1987 (Cth) (the old Act). This application was accepted by the second respondent and by letter dated 28 May 1992 the Registrar of Plant Variety Rights advised Caithness’ then agents that the application had been accepted.
Subsequently, the date of acceptance of the application has been recorded in the Register of Plant Varieties maintained pursuant to s 61 of the old Act as 3 July 1992.
In September 1992 the Plant Variety Rights Office which was then an office of the Department of Primary Industries and Energy published a public notice in that month’s issue of the Plant Varieties Journal (Volume 5, Issue No. 3) notifying that it had accepted the application stating the date of acceptance to be 28 May 1992.
In the December 1994 issue of the same journal (Volume 7, Issue No. 4), the acceptance date for the application was recorded as 3 July 1992.
The respondents have tendered an affidavit of Douglas Brydon Waterhouse, an employee of IP Australia, which is a prescribed agency with the Department of Innovation, Industry, Science and Research who has deposed that the acceptance date entered in the Register of Plant Variety Rights on 3 July 1992 is incorrect. He has deposed that the correct date of acceptance was in fact 28 May 1992. In a Statement of Agreed Facts the respondents say that they intend to apply to the Court for orders changing the expiry date in Nadine to 28 May 2012 in the event that the Court dismisses the applicants’ proceeding and refuses the relief sought by the applicants. No application has been made by the respondents to rectify the Register.
A Statement of Agreed Facts to which s 191(3) of the Evidence Act 1995 (Cth) (the Evidence Act) applies obviates the need to prove the existence of an agreed fact: s 191(2)(a) of the Evidence Act. Section 191(2)(b) of the Evidence Act precludes a party adducing evidence to contradict or qualify an agreed fact without first obtaining the Court’s leave. In Minister for Environment, Heritage and the Arts v PGP Developments Pty Limited (2010) 183 FCR 10, Stone J said at [35]:
Section 191 provides that, unless the court gives leave, that the facts stated are not required to be proved by evidence and that evidence may not be adduced to contradict or qualify an agreed fact. The effect of s 191 is to admit the agreed facts as evidence. It still remains for the Court to determine whether the facts are to be accepted as true and to determine what weight to attribute to that evidence. Whether the Court accepts the agreed facts, in whole or in part, may depend, among other things, on the coherence of the narrative created by the facts or their inherent credibility. If, for example, a statement contained mutually inconsistent facts the Court would be obliged to take account of the inconsistency. In attempting to resolve the problem it would not be entitled to require evidence although, as provided in s 191(2), it might give leave to the parties to adduce evidence to resolve the inconsistency. In the absence of further evidence, and taking the context provided by other evidence including other agreed facts, it might possibly accept one or other of those facts. Clearly, however, it could not accept both of the facts in question as true.
(Original emphasis.)In this case some of the facts which are said to be agreed may be inconsistent with the respondent’s argument as to the construction of the legislation under review. The Statement of Agreed Facts include facts which are the legal characterisation of the matters in issue.
On 10 November 1994, before the second applicant’s application had been determined and whilst it remained pending, the Plant Breeder’s Rights Act 1994 (Cth) (the new Act) was proclaimed. Section 78 of that Act repealed the old Act. The new Act provided for the grant of plant breeder’s rights (PBR).
On 16 August 1995 Caithness’ application was granted and it was issued with a certificate numbered 465 which said that plant variety rights had been granted to Caithness in respect of the variety Nadine under s 26(1) of the old Act, and that the date for expiry of the rights was 3 July 2012, being 20 years from the acceptance date recorded in the Register.
Shortly after the application was granted, the Registrar of Plant Breeder’s Rights entered the details of the grant in the Register of Plant Varieties maintained pursuant to s 61 of the new Act. The Register merely records:
465 ‘NADINE’ 16 August 1995
Solanum tuberosumIn the September 1995 issue of the Plant Varieties Journal (Volume 8, Issue No. 3), public notice of the grant of PBR in respect of Nadine was given which recorded the date for expiry of the rights as 3 July 2012.
The proceeding which was commenced on 26 October 2010 claims the following relief:
1.A declaration that pursuant to section 22 of the Plant Breeder’s Rights Act, 1994 (“PBR Act”), the Plant Breeder’s Rights (“PBR”) granted to Caithness Potato Breeders Limited in respect of the plant variety “Nadine” (in the Solanum genus and Tuberosum species) on 16 August 1995, have a duration of 20 years commencing on 16 August 1995 and expiring on 16 August 2015.
2.An injunction requiring the First Respondent (“Registrar”) to:
2.1retain the entry for Nadine in the Register of Plant Varieties maintained pursuant section 61 of the PBR Act (“Register”) until:
2.1.1 16 August 2015; or
2.1.2in the event that regulations are made pursuant to section 22(3) of the PBR Act specifying a duration of PBR for Nadine or Solanum Tuberosum of greater than 20 years, the expiry of that greater period calculated from 16 August 1995; and
2.2amend the Register to record the current expiry date for PBR in Nadine as 16 August 2015; and
3. An injunction requiring the Registrar and/or the Second Respondent to:
3.1issue to Caithness Potato Breeders Limited a certificate pursuant to section 44(10) of the PBR Act specifying the expiry date for PBR in Nadine as 16 August 2015 (“Corrected Certificate”);
3.2attach a copy of the Corrected Certificate to the entry for Nadine in the hard copy Register; and
3.3publish a notice in the next edition of The Plant Varieties Journal of the 16 August 2015 expiry date for PBR in Nadine.
4. Costs.
The parties agreed in the Statement of Agreed Facts on the issue which is to be determined by the Court:
Whether a grant of rights made under the new PBR Act but applied for under the old PVR Act enjoys a term of 20 years from the date of acceptance (the PVR Act term) or 20 years from the date of grant (the PBR Act term). If the answer is 20 years from grant, then orders amending the term to expire on 16 August 2015 would be appropriate.
The answer to the question, of course, lies in the legislation. However, I came to the view when considering these reasons that the question posed may not arise on the facts and on the true construction of the legislation.
The Court reconvened and after a short debate the parties reformulated the question:
Whether a grant of rights made on or after 10 November 1994 in respect of an application under the old Act enjoys a term of 20 years from the date of acceptance (the old Act term) or 20 years from the date of grant (the new Act term). If the answer is 20 years from grant, then orders amending the term to expire on 16 August 2015 would be appropriate.
The parties did not agree to any changes to the Statement of Agreed Facts. The parties agreed that the Court should give such weight to the agreed facts as the Court thought appropriate having regard to the construction to be given to the legislation.
Part 9 of the new Act is headed “Transitional” and provides for transitional arrangements in respect of plant variety rights which have been granted in respect of the old Act and applications for plant variety rights which had been made but not disposed of under the old Act.
Section 82 addresses the first of those circumstances and provides, effectively, that where a person was granted plant variety rights in respect of a plant variety under the old Act which are still in force at the commencement of the new Act, those rights have effect despite the repeal of the old Act as if the new Act had been in force at the time when those rights were granted and they have been granted at that time as PBR in that variety.
Although s 82 of the new Act is not directly relevant to the application before me, it will be necessary to have regard to the section in order to appreciate the effect of the construction of s 83 of the new Act which is directly relevant.
Section 82 provides:
82 Plant variety rights under old Act to be treated as PBR under this Act
(1) If:
(a)a person was granted plant variety rights in respect of a plant variety under the old Act; and
(b)those rights were still in force immediately before the commencing day;
then, subject to the regulations, those rights have effect, despite the repeal of the old Act, on and after that day, as if:
(c)this Act had been in force at the time when those rights were granted; and
(d) they had been granted at that time as PBR in that variety.
(2)Despite subsection (1), rights treated as if they had been granted as PBR under this Act continue in force for so long only as they would have continued in force if the old Act had not been repealed.
(3)Nothing in this section gives the holder of rights treated as PBR in a particular plant variety under this Act the right to claim PBR in respect of plant varieties that would, under this Act, be dependent plant varieties in relation to that particular plant variety.
(4)Nothing in this section gives the holder of rights treated as PBR in a particular plant variety under this Act the right to seek a declaration that another plant variety is an essentially derived variety of the particular plant variety unless PBR in that other plant variety was given only on or after the commencing day.
Section 82(2) limits the duration of the rights granted under the old Act to the duration given by the old Act. For that reason, the rights which s 82 deems apply will expire 20 years after the date acceptance: s 32 of the old Act.
Section 82(3) and (4) specifically excludes from the deemed rights given by s 82(1) the rights mentioned in those subsections.
Those rights I am told correlate with the PBR rights which may be granted to an applicant under the new Act if that applicant complies with s 44(1)(vii) and (viii).
Section 83(1) addresses, as is the case here, applications for plant variety rights made under the old Act which had not finally been disposed of under that Act before the enactment of the new Act. Section 83(1) is the relevant subsection. Section 83(2) is not relevant. Section 83(1) provides:
83Applications for plant variety rights lodged and criminal proceedings begun before commencing day
(1) If, before the commencing day:
(a)a person has made application for plant variety rights under the old Act; but
(b)the application has not been finally disposed of under that Act;
the provisions of the old Act are taken to continue in force, for the purpose of dealing with the application, and any objection that has been made before that day, or is made after that day, in relation to the application.
Section 83(1) applies if, before 10 November 1994, a person had made an application for plant variety rights under the old Act and that application had not been finally disposed of under that Act. Subsection (1) applies to the second applicant which had made an application on 21 May 1992 which had been accepted either on 28 May 1992 or 3 July 1992 and had not been disposed of as at 10 November 1994. In those circumstances, the question is what is the effect of s 83(1) upon that application?
Before addressing that question, one other section in the Transitional section needs to be mentioned. Section 86 of the new Act provides that the Register of Plant Varieties under the old Act is taken to form part of the Register of Plant Varieties under the new Act. Section 61 of the new Act obliges the Registrar of Plant Breeders Rights to keep a Register which will be known as the Register of Plant Varieties.
The applicants contend that the old Act applies for the purpose of considering the application but that any grant is made under the new Act and, in those circumstances, the 20 year date runs from the date of grant rather than the date of acceptance. The respondents contend that the old Act applies for the purpose of considering the application and also for the purpose of the grant such that the 20 year period runs from the date of acceptance which, the respondents have contended for reasons which I have earlier mentioned, should be stated to be 3 July 1992 rather than 28 May 1992. That last issue can be left to one side for the moment.
The question can be narrowed more precisely I think to a consideration as to whether the words in s 83(1) “for the purpose of dealing with the application, and any objection that has been made before that day, or is made after that day” include the actual grant under the old Act or whether the grant is made under the new Act. That question must be answered by reference to the two Acts.
The purpose of the two Acts is the same and that is to provide for the granting of proprietary rights to persons who originate or breed new plant varieties. The Acts grant similar rights to persons who have originated or bred new plant varieties but it is fair to say the new Act grants more extensive rights than the old Act.
The old Act created a Registrar of Plant Variety Rights (s 6) who was obliged to keep a Register of Plant Variety Rights in which was to be entered particulars required to be entered by the Act: s 9.
Section 12 identified plant variety rights. It provided:
12. (1) Plant variety rights, in respect of a new plant variety, are—
(a) the exclusive right to sell, including the right to license other persons to sell, plants of that variety;
(b) the exclusive right to sell, including the right to license other persons to sell, reproductive material of plants of that variety;
(c) the exclusive right to produce, including the right to license other persons to produce, plants of that variety for sale; and
(d) the exclusive right to produce, including the right to license other persons to produce, reproductive material of plants of that variety for sale.
(2) Plant variety rights in respect of a plant variety are subject to conditions imposed in respect of those rights by section 33 or under section 34.
Plant variety rights are personal property and are capable of assignment or by transmission by will or by operation of law: s 30 of the old Act.
Section 15 authorised a breeder of new plant variety to make an application to the Secretary (of the Department) for plant variety rights in respect of the variety. The application had to be made in the form approved by the Secretary under s 16 of the Act. Where an application was lodged in respect of new plant varieties and the Secretary was satisfied that the application complied with s 16 and the name of the variety complied with s 17, the Secretary was obliged to accept the application or, if the Secretary was not so satisfied, the Secretary was obliged to reject the application: s 18.
An applicant could request the Secretary in writing to vary the application which variation the Secretary could, in the exercise of his or her discretion, allow: s 19.
Section 20 of the old Act provided for objections to an application for a grant of plant variety rights and, having regard to the respondents’ arguments, ought to be set out in full:
20. (1) Where public notice of an application for plant variety rights in respect of a plant variety or of the variation of such an application is given, any person who considers—
(a)that the commercial interests of the person would be affected by the grant of those rights to the applicant; and
(b)that the Secretary cannot be satisfied, in relation to that variety, of a matter referred to in paragraph 26 (1) (a) (other than a matter referred to in sub-paragraph 26 (1) (a) (viii)),
may, within 6 months after the giving of public notice of the application or any further time before the application is disposed of that is allowed by the Registrar, lodge with the Registrar written objection to the grant of those rights setting out particulars of the manner in which the person considers that the interests of the person would be affected and of the reasons why the person considers that the Secretary cannot be satisfied of that matter.
(2) Where an objection to the grant of plant variety rights is lodged under sub-section (1), the Registrar shall cause a copy of that objection to be given to the applicant for those rights.
Two grounds were given in s 20 for objection to the grant of rights. First, if the commercial interests of the objector would be affected. Secondly, if the Secretary could not be satisfied in relation to the variety of a matter referred to in s 26(1)(a) other than a matter referred to in s 26(1)(a)(viii).
Where an application had been made in respect of a plant variety and had been accepted but not granted, s 22 of the old Act provided for provisional protection. In those circumstances, the applicant for the purpose of the Act was deemed to be the grantee of plant variety rights in respect of that plant variety during the period commencing on the acceptance of the application and ending when the application was disposed of, or if the Secretary had given notice under s 22(2): s 22. The purpose of s 22 was to provide a protection to an applicant for plant variety rights during the period after acceptance by the Secretary and before consideration under s 26 of the old Act.
Section 26 addressed the Secretary’s duties when considering an application for plant variety rights. It provided:
26. (1) Subject to this section, where an application for plant variety rights in respect of a plant variety is accepted—
(a) if the Secretary is satisfied that—
(i) there is such a plant variety;
(ii) the plant variety is a new plant variety;
(iii) the applicant is entitled to make the application;
(iv)the grant of those rights to the applicant is not prohibited by this Act;
(v)those rights have not been granted to another person;
(vi)there has been no earlier application for those rights that has not been withdrawn or otherwise disposed of;
(vii)the name of the variety would comply with section 17; and
(viii)all fees payable under this Act in relation to the application and the grant have been paid,
the Secretary shall grant those rights to the applicant; or
(b)if the Secretary is not so satisfied—the Secretary shall refuse to grant those rights to the applicant.
(2) The Secretary shall not grant, or refuse to grant, plant variety rights in respect of a plant variety unless a period of at least 6 months has elapsed since the giving of public notice of the application, or, if the application has been varied in pursuance of a request under sub-section 19 (1) in a manner that the Secretary considers to be significant, a period of 6 months has elapsed since the giving of public notice of particulars of the variation, or of the last such variation, as the case requires.
(3) The Secretary shall not refuse to grant plant variety rights unless the Secretary has given the applicant for the rights a reasonable opportunity to make a written submission to the Secretary in relation to the application.
(4) Where an objection to the grant of plant variety rights has been lodged under section 20, the Secretary shall not grant the rights unless the Secretary has given the person who lodged the objection a reasonable opportunity to make a written submission to the Secretary in relation to the objection.
(5) Plant variety rights shall be granted to a person by the issue to that person by the Secretary of a certificate, signed by the Secretary or by the Registrar, in a form approved by the Secretary and containing such particulars of the plant variety to which the rights relate as the Secretary considers appropriate.
(6) Where plant variety rights are granted to persons who made a joint application for those rights, those rights shall be granted to those persons jointly.
(7) Where the Secretary refuses to grant plant variety rights in respect of a plant variety, the Secretary shall, within 30 days after refusing, give written notice of the refusal to the applicant for the rights setting out the grounds for the refusal.
The following propositions arise out of s 26: first, the Secretary had to be satisfied of the matters in s 26(1)(a) and, if so satisfied, had to grant the plant variety rights to the applicant; secondly, if the Secretary was not so satisfied, the Secretary had to refuse to grant those rights; thirdly, there was no discretion reposing in the Secretary in relation to the application; fourthly, the period mentioned in s 26(2) must have elapsed before the Secretary made a decision under s 26(1); fifthly, the Secretary could not refuse to grant the application unless the Secretary had given the applicant a reasonable opportunity to make written submissions in relation to the application; sixthly, if an objection has been lodged under s 20, the Secretary could not grant the application unless the Secretary had given the person who lodged the objection a reasonable opportunity to make a written submission to the Secretary in relation to the objection; seventhly, plant variety rights were to be granted to a person by the issue to that person by the Secretary of a certificate signed by the Secretary or by the Registrar in a form approved by the Secretary which contained such particulars as the Secretary considered appropriate; and eighthly, where the Secretary refused the application, the Secretary had to give written notice of the refusal within 30 days to the applicant setting out the grounds for the refusal.
Section 26 required the Secretary to consider the application and any objection, and accord the applicant and the objector procedural fairness in accordance with the terms of the section prior to making a decision as to whether the application was to be granted. Importantly, the objection was to be considered at the same time as the application for the grant.
Section 27 of the old Act provided for the entry of the grant of plant variety rights into the Register. It provided:
27. When the Secretary grants plant variety rights in respect of a plant variety, the Registrar shall enter in the Register—
(a)a description, or a description and photograph, of a plant of that variety;
(b) the name of the variety;
(c) the name of the grantee;
(d) the name and address of the breeder;
(e)the address for the service of documents on the grantee for the purposes of this Act which is shown on the application for the rights;
(f)the day on which the rights were granted; and
(g)such other particulars relating to the grant as the Secretary considers appropriate.
Section 32 of the old Act addressed the duration of the plant variety rights. It provided:
32.Subject to this Act, plant variety rights in respect of a plant variety subsist for a period of 20 years commencing on the day on which the successful application for plant variety rights in respect of the plant variety was accepted.
There was no dispute between the parties concerning the effect of s 32 of the old Act. The duration commenced on the day of acceptance and not the day upon which the Secretary granted plant variety rights to the applicant. Because of the provisions of s 22 which gave an applicant provisional plant variety rights, the applicant if a grant were made under s 26 had uninterrupted protection from the day of acceptance up to the date of the grant and with s 32 protection for a period of 20 years from the day of acceptance.
Section 35 empowered the Secretary to revoke plant variety rights in respect of a plant variety if any of the circumstances in s 35 arose. If the matters in s 35(1) were made out, it was mandatory. If the matters in s 35(2) were made out, it was discretionary. The section required the Secretary to accord the grantee procedural fairness before making a decision to revoke a party’s plant variety rights: s 35(4). If the Secretary decided to revoke a party’s plant variety right, the revocation took effect at the expiration of the period within which an application could be made to the Administrative Appeals Tribunal (the Tribunal) or if an application were made when the application was determined by the Tribunal: s 35(5).
Section 36 allowed a grantee of plant variety rights to surrender those rights and the Registrar could, in the exercise of the Registrar’s discretion, accept the offer and revoke the rights.
Section 40 addressed circumstances in which a grantee’s plant variety rights were infringed. Section 41 empowered a grantee to institute proceedings in this Court for an infringement of the applicant’s plant variety rights. Section 43 addressed this Court’s jurisdiction in relation to an application of that kind.
Section 44 of the new Act provides for the grant of PBR. PBR is defined to be in a plant variety the plant breeder’s rights specified in s 11 of the new Act: s 3. Section 11 provides:
11 General nature of PBR
Subject to sections 16, 17, 18, 19 and 23, PBR in a plant variety is the exclusive right, subject to this Act, to do, or to license another person to do, the following acts in relation to propagating material of the variety:
(a) produce or reproduce the material;
(b) condition the material for the purpose of propagation;
(c) offer the material for sale;
(d) sell the material;
(e) import the material;
(f) export the material;(g)stock the material for the purposes described in paragraph (a), (b), (c), (d), (e) or (f).
The PBR rights given by s 11 are extended by ss 12 and 13. Section 12 extends the PBR in a plant variety to another plant variety subject to a restriction in s 23 which is not important. Section 13 extends the PBR granted in a plant variety to another plant variety that cannot be reproduced, except by the repeated use of the initial variety or of the variety referred to in s 13 itself. That extension is also subject to an exception in s 23, which is again not important. Sections 14 and 15 also have the effect of extending PBR to include propagating material.
Like the plant variety rights given under the old Act, PBR is personal property and is capable of an assignment or a transmission by will or by operation of law: s 20 of the new Act.
Part 3 of the new Act provides for the making of an application by a breeder of plant variety for PBR in the variety. Section 24 gives the right to make the application which is personal property: s 25. Section 26 provides for the form of the application. Section 27 provides for the names of the new plant varieties. Those names must conform with s 27. Section 28 provides that each application must have a priority date which is to be given by the Secretary. The priority date is the date on which the application was lodged with the Secretary.
Section 30 requires the Secretary as soon as practicable after an application for PBR is lodged for a plant variety to decide whether to accept or reject the application. Section 31 allows for the variation of the application. Section 33 provides that an application may be withdrawn.
Division 2 of Part 3, which is headed “Dealing with the application after its acceptance”, addresses the manner of dealing with the application.
Section 34 requires the applicant to provide a detailed description of the plant variety to which the application relates, if one has not already been provided, within 12 months of the application having been accepted. The form of the detailed description is prescribed in s 34.
Section 35 provides that a person may object to an application for PBR which has been accepted by lodging a written objection to the grant. The grounds of the objection are the same as those given by s 20 of the old Act.
Section 37 empowers the Secretary to require a party to provide a test growing or a further test growing of the variety to which the application, objection or request relates.
Division 3 of Part 3 deals with the provisional protection for an applicant for PBR and provides a similar protection to the old Act for an application pending the grant of the application: s 39. Protection is given from the day of acceptance until the application is disposed of or the Secretary has given the application notification under s 39(2). Notification may be given under subsection (2) when it appears to the Secretary that it is unlikely for any of the reasons in that subsection that a grant will be made.
Part 4 deals with the grant and revocation of PBR. Section 44 deals with the grant.
Relevantly, s 44 provides:
44 Grant of PBR
(1) If:
(a) an application for PBR in a plant variety is accepted; and
(b)after examining the application (including the subsequent detailed description) and any objection to the application, the Secretary is, or continues to be, satisfied that:
(i) there is such a variety; and
(ii)the variety is a registrable plant variety within the meaning of section 43; and
(iii)the applicant is entitled to make the application; and
(iv)the grant of that right is not prohibited by this Act; and
(v)that right has not been granted to another person; and
(vi)the name of the variety complies with section 27; and
(vii)propagating material of that variety has been deposited for storage, at the expense of the applicant, in a genetic resource centre approved by the Secretary; and
(viii)if the Secretary so requires, a satisfactory specimen plant of the variety has been supplied to the herbarium; and
(ix)all fees payable under this Act in respect of the application, examination and grant have been paid;
the Secretary must grant that right to the applicant.
…
(3) If:
(a) an application for PBR in a plant variety is accepted; and
(b)the Secretary is not satisfied of all of the matters referred to in paragraph (1)(b);
the Secretary must refuse to grant that right to the applicant.
…
(12)If the Secretary refuses to grant PBR in a plant variety, the Secretary must, within 30 days of so refusing, give written notice to the applicant:
(a) telling the applicant of the refusal; and
(b) setting out the reasons for the refusal.The scheme for the grant is much the same as the old Act. Section 44 requires the Secretary to consider the application in the light of any objection before deciding to grant or refuse to grant the application.
Section 46 of the new Act requires the Registrar, if the Secretary has granted PBR in a plant variety, to enter the details of the grant in the Register. Section 47 requires the Secretary to give notice as soon as possible after granting PBR to a person in the Plant Varieties Journal. As previously mentioned s 61 of the new Act provides for a Register of Plant Varieties and is the Register to which ss 46 and 86 apply.
When the provisions of the old Act and the new Act are considered, it becomes apparent that an application for plant variety rights made under the old Act which had not been disposed of at the time of the enactment of the new Act must be decided by reference to the old Act and what is granted are plant variety rights under the old Act and not PBR under the new Act. The new Act’s transitional provisions and in particular s 83 allows the old Act to continue to apply up to the stage of the grant of rights. The expression in s 83(1) “for the purpose of dealing with the application, and any objection that has been made before that day, or is made after that day, in relation to the application” means dealing with the application under the old Act.
Section 83 requires the application which has not been dealt with and any objection to that application to be dealt with under the provisions of the old Act. Section 15 of the old Act provided for an application to be made in respect of plant variety rights. Section 20, which has been set out above (at [37]), allowed for an objection to be made for either of the two grounds in s 20(1) of the old Act. Section 26 provided for the manner in which the application, and any objection to that application, was to be dealt with. The application and the objections had to be dealt with at the same time. The only provision that would allow that to occur is s 26 of the old Act. An application under the old Act could not be considered without a consideration of any objections. Section 26(4) which is referred to in [40] requires the Secretary to give an objector an opportunity to be heard on the application by making written submissions. The application must be considered in the light of the objections.
The new Act could not apply; first, because of the provisions of s 83 itself; and secondly, because of the provisions of the new Act which govern applications only under the new Act.
An application under the new Act is governed by s 44(1)(a) but that paragraph only allows the Secretary to consider an application for PBR in a plant variety. An application under the old Act is not an application for PBR and not deemed to be by s 83.
Section 44 cannot be the vehicle for a consideration under the old Act for two reasons. Section 83(1) does not make it so. But, more importantly, the matters of which the Secretary must be satisfied under s 44 differ from those under the old Act. The application under the old Act could not cause the Secretary to be satisfied under s 44. For example, s 44 requires the Secretary to be satisfied of the matters in placita (vii), (viii) and (ix) of paragraph (b) of subsection (1) of s 44. An applicant under the old Act did not need to address (vii) and would not have needed to address (viii), and would not have paid the fees in (ix) under the new Act.
There was no obligation under the old Act to provide the propagating material mentioned in s 44(1)(b)(vii) so the applicant under the old Act could not comply with that placitum. Moreover, there was no power under the old Act for the Secretary to require compliance with placitum (vii). No fees would have been paid under the new Act so the applicant would not have complied with placitum (ix).
As well, s 44(1)(b) requires the applicant to comply with placitum (ii). It is not clear that an applicant under the old Act would, in all cases for which a valid application was being considered under the old Act, be able to bring the variety within s 43.
Section 44 is designed to consider applications under the new Act, not an application that has been lodged under the old Act and not been disposed of under that Act.
The other reason why s 44 does not govern applications under the old Act is that if s 44 is satisfied the applicant becomes entitled to PBR. That would mean that the applicant would obtain all the PBR given by the Act. The clear intention in s 82 of the new Act is not to give persons who enjoyed plant variety rights under the old Act the rights which s 82(3) and (4) exclude, which correlate with the matters in s 44(1)(b)(vii) and (viii).
If the applicant’s argument were right, an applicant whose application had not been considered at the time of the enactment of the new Act would obtain those rights notwithstanding that the placita would not have been satisfied and notwithstanding Parliament’s intention to exclude old Act applicants from those rights.
Section 44 therefore has no application to an application made under the old Act.
In those circumstances, what is granted is that which is given under s 26 and that is a grant of the rights in s 26 for plant variety rights.
It follows therefore that if an application had been made under the old Act which had not been dealt with at the time of the enactment of the new Act, the grant of any rights in respect of that application was determined by reference to s 26 of the old Act.
The end result is that an application made under the old Act prior to the new Act will be granted or refused in accordance with the provisions of s 26 of the old Act. If it is granted, then it follows that the applicant is granted plant variety rights and the duration of those plant variety rights are governed by s 32 of the old Act which is for a period of 20 years commencing on the day on which the successful application for plant variety rights in respect of the plant variety was accepted.
The construction at which I have arrived leads to an unfortunate result because it means that an applicant who obtains plant variety rights under the old Act after the enactment of the new Act cannot come within s 82 and thereby cannot obtain PBR under the transitional provisions in s 82. Section 82 of the new Act allows a person who was granted plant variety rights in respect of a plant variety under the old Act, which rights were still in force immediately before the commencing day, to enjoy those rights on and after the commencement of the Act as if the new Act had been enforced when those rights were granted and the person had been granted PBR in that variety. Section 82 however would not apply to a person who had made an application under the old Act which had not been considered at the time of the enactment of the new Act because that person could not bring himself or herself within s 82(1)(b) because the plant variety rights were not in force immediately before the commencing day. It follows that a person whose application had not been granted at that time of the new Act is only entitled to plant variety rights, notwithstanding that a person whose application had been granted prior to the new Act and whose rights were still in force is still entitled to PBR as if the new Act were in force at the time that the plant variety rights were granted.
Unfortunately that is an unfairness that cannot be avoided. It will be for Parliament to address that issue.
It can be seen from these reasons that the premise in the original question which the parties posed is not correct. The question assumed the applicant under the old Act was granted PBR under the new Act, an assumption with which I cannot agree. The Statement of Agreed Facts contained similar assertions. The Statement of Agreed Facts provided in paragraph 4:
4.On or about 1 July 1998, Caithness granted to Elders an exclusive head license in respect of the production and marketing of Caithness potato varieties (including ‘Nadine’) in Australia. Subsequent to the grant of this License, Elders became, and remains, the registered agent for Caithness in respect of its PBR in ‘Nadine’.
The legal consequences which are contained in the second sentence are not with respect correct and insofar as the Statement of Agreed Facts asserts that Caithness was given PBR under the new Act, I reject those facts.
The only right Caithness got under the new Act was to have its application under the old Act considered and if the Secretary was satisfied of the matters in s 26 of the old Act, plant variety rights under that Act.
After the hearing Caithness provided a supplementary written submission. It did not abandon its primary argument that it had been granted PBR under the new Act, but put an alternative submission.
It contended that if the Court were to conclude that on a literal construction the grant was under the old Act, the Court should conclude that the result is a drafting error. It argued that the Court should interpret the section as if additional words were included: Inco Europe Ltd v First Choice Distribution (a firm) [2000] 1 WLR 586.
In that case Lord Nicholls (with whom Lord Jauncy, Lord Steyn, Lord Clyde and Lord Millett agreed) said at 592:
I freely acknowledge that this interpretation … involves reading words into the paragraph. It has long been established that the role of the courts in construing legislation is not confined to resolving ambiguities in statutory language. The court must be able to correct obvious drafting errors. In suitable cases, in discharging its interpretative function the court will add words, or omit or substitute words.
…
This power is confined to plain cases of drafting mistakes. The courts are ever mindful that their constitutional role in this field is interpretative. They must abstain from any course which might have the appearance of judicial legislation. A statute is expressed in language approved and enacted by the legislature. So the courts exercise considerable caution before adding or omitting or substituting words. Before interpreting a statute in this way the Court must be abundantly sure of three matters: (1) the intended purpose of the statute or provision in question; (2) that by inadvertence the draftsman and Parliament failed to give effect to the purpose of the provision in question; and (3) the substance of the provision Parliament would have made, although not necessarily the precise words Parliament would have used, had the error in the Bill been noticed. The third of these conditions is of crucial importance. Otherwise any attempt to determine the meaning of the enactment would cross the boundary between construction and legislation.
The additional words which should be read in at the end of s 83 are said to be “save that a successful applicant will be granted PBR pursuant to the provisions of the Act”.
Assuming this Court had the power to do what the applicant contends, the Court should decline to exercise the power for two reasons which follow from the reasons for the construction that I have suggested. First, it would mean that an applicant who could not comply with s 44 of the new Act would have to be deemed to have complied otherwise the application would have to be refused. That would require some further words to be notionally added. Secondly, the applicant would obtain rights, being PBR, that s 82 contemplates that an old Act applicant should not be entitled. The applicant would obtain the rights which are specifically excluded in s 82(3) and (4). That would be a very odd result. It would mean that an applicant who had been granted plant variety rights under the old Act would be deemed to be entitled to PBR without the rights in s 82(3) and (4), but an applicant who had made an application under the old Act but who had not been granted any rights would become entitled to PBR including the rights under s 82(3) and (4).
This is not a piece of legislation which can be redrawn by the Court. The unfortunate result which the drafting error discloses is a matter for Parliament.
For those reasons, in my opinion, the application must be dismissed.
I certify that the preceding eighty-eight (88) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Lander. Associate:
Dated: 19 April 2011
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