Madderns

The Australian Government is negotiating a Free Trade Agreement (FTA) with the European Union (EU). As part of the FTA, the EU wants a variety of geographical indications (GIs) to be protected.

A GI indicates that a product comes from a specific geographical area. Use of a GI may indicate that the product was made according to, eg, traditional methods or may indicate a certain reputation. An example is “Champagne”, which refers to the specific region of France known for its sparkling wine.

The EU is looking for protection of a specific list of GIs (236 spirit names and 172 agricultural and other foodstuff names) which includes the names such as: “Camembert de Normandie” for cheese, “Καλαμάτα or Kalamata” for olive oil, “Φέτα or Feta” for cheese and “Scotch Beef” for meat. The EU has confirmed examples of where the protection it is seeking would not extend to the use of parts of EU GI names which are identified in the list by text that has been underlined. The complete list of names can be found here.

As well as seeking protection for the specific GIs, the EU is seeking broader protections that would prevent use of the GIs accompanied by an expression such as “style”, “type”, “method”, “as produced in”, “imitation”, “flavour”, “like” or similar, including when those products are used as an ingredient.

Accordingly, Australian cheese makers would no longer be able to sell cheese as “Feta” or even “Feta-style” or “Feta-like”. The same applies to “Kalamata” olive oil.

Seems like the EU is asking too much. Your thoughts?

If you have any objections, they can be made here and must be received by 6pm AEST Wednesday 13 November 2019.

The rules keep changing over whether plants or plant products obtained by means of an essentially biological process are patentable in Europe.

Under Article 53(b) EPC (and Article 4 Biotech Directive), European patents shall not be granted in respect of plant varieties or essentially biological processes for the production of plants. Originally, this was interpreted to extend to plants and plant products obtained by means of an essentially biological process.

This was challenged in Broccoli/Tomatoes I (G 0002/07 & G 0001/08) and Broccoli/Tomatoes II (G 0002/12 & G 0002/13), following which, it was allowable to have a product claim directed to plants or plant material such as a fruit, even though the plant or plant material might be obtained by an essentially biological process, which is not patentable.

The European Commission considered the issue (2016/C 411/03) and took the view that the EU legislator’s intention when adopting the Biotech Directive was to exclude from patentability products (plants and plant parts) that are obtained by means of essentially biological processes.

The Administrative Council of the EPO then introduced Rule 28(2) to modify Article 53(b) EPC. Rule 28(2) states that European patents shall not be granted in respect of plants exclusively obtained by means of an essentially biological process.

Recently, the Technical Board of Appeal decided that Rule 28(2) is in conflict with Article 53(b) EPC and therefore, in accordance with Article 164(2) EPC, the provisions of the Convention prevail. Accordingly, Rule 28(2) is void.

This means that European patents can again be granted in respect of plants exclusively obtained by means of an essentially biological process. The question now is: how long will it last?

A rare decision was recently handed down by the Australian Plant Breeder’s Rights Office, revoking a granted Plant Breeder’s Right (PBR) for a variety of the native Australian grass Lomandra known as ‘Lime Tuff’. The PBR grantee was Bushland Flora (‘Bushland‘) and the applicant for revocation was Majestic Selections Pty Ltd (‘Majestic‘). Majestic successfully made out two grounds for revoking the PBR.

THE VARIETY WAS NOT DISTINCT

For a plant variety to be registrable it must be “distinct”. A distinct plant variety is one that is “clearly distinguishable from any other variety whose existence is a matter of common knowledge”.

A variety may become common knowledge for a number of reasons, including commercialisation of propagating or harvested material of the variety, the variety being the subject of a PBR application resulting in the grant of a PBR right, or the public availability of plant material in a collection.

The first ground pressed (and subsequently made out) by Majestic was that the variety of Lomandra the subject of the PBR, ‘Lime Tuff’, was not clearly distinguishable from a variety of common knowledge known as ‘Little Pal’.

DNA Testing

Majestic attempted to show the relatedness of ‘Lime Tuff’ to 23 samples of Lomandra through the use of DNA evidence, specifically, the presence or absence of a suite of molecular markers.

The Delegate considered that the usefulness of DNA evidence in determining distinctiveness is limited, and that the DNA evidence provided by Majestic established relative relatedness between ‘Lime Tuff’ and the other varieties, but not necessarily phenotypic similarity.

Phenotypic Examination

The Delegate then considered phenotypic similarity between ‘Lime Tuff’ and other prior existing Lomandra varieties.

Majestic’s botanical expert indicated that there were only slight morphological differences between ‘Lime Tuff’ and the other Lomandra varieties and that “[t]hey all form robust tussocks with very numerous, narrow leaves of the same yellow-green colour and texture, both are equally hardy and adaptable to a wide range of conditions in horticultural applications, and they do not differ in method(s) of propagation.”

In view of the Expert’s evidence, the Delegate found that ‘Lime Tuff’ was not clearly distinguishable from the other Lomandra varieties (including ‘Little Pal’).

Common Knowledge

The Delegate then had to consider whether one or more of the other Lomandra varieties (including ‘Little Pal’) were plant varieties of common knowledge that existed prior to the PBR application for ‘Lime Tuff’. ‘Little Pal’ had been sold to a school prior to the filing date of the PBR application.

The Delegate indicated that this sale was sufficient for the variety to be considered as commercialised and was therefore common knowledge. The Delegate also indicated that it is how a plant variety looks that is important in determining whether it is common knowledge, rather than the labelling under which a plant variety is sold.

THE VARIETY HAD NO BREEDER

For a plant variety to be eligible for PBR protection, it must have been bred. Consequently, a PBR application must describe the breeding involved and nominate the breeder.

The second ground pressed (and subsequently made out) by Majestic related to the PBR application for the variety ‘Lime Tuff’ inaccurately describing the breeding process.

The breeder of ‘Lime Tuff’ intended to select progeny resulting from the hybridisation of Lomandra longifolia and Lomandra confertifolia subsp. pallida.

However, evidence from the Melbourne Herbarium and Majestic’s botanical expert suggested that ‘Lime Tuff’ was not the result of hybridisation, and therefore, as Bushland submitted no evidence to the contrary, the Delegate held that ‘Lime Tuff’ was not bred as described.

TAKE-HOME MESSAGES

This decision teaches us that a plant variety the subject of PBR will be deprived of registrability if it is not clearly distinguishable from another variety that has been sold prior to the filing date of the PBR application, regardless of whether the breeder is aware of the other variety. It also does not matter what name the other variety is sold under, it is what the variety looks like that is important.

This decision also highlights the importance of accurately recording the breeding methods used to produce a plant variety, lest the PBR be susceptible to revocation. If there is any doubt as to whether the variety is clearly distinguishable from known varieties, it may be wise to seek independent verification of a variety by, for example, a Herbarium, before filing the PBR application. This may also help resist an attack on the breeding methods of the PBR.

The Australian Government offers a financial assistance program for aspiring and current exporters to cover the costs associated with export promotion activities; the Export Market Development Grants (EMDG) scheme.

The scheme has now been expanded to cover up to 50% of eligible export promotion expenses after the first $5,000 provided that the total expenses are at least $15,000. The initial payment ceiling for the grant year 2013–14 for the EMDG scheme is $60,000. Exporters with entitlements above this amount will receive a second payment at the end of June 2015. The 2013–14 grant year was open until 1 December 2014.

Protecting intellectual property rights internationally can be vital to success in overseas markets. Trade marks provide protection for the brand of a business. As many countries now operate on a first-to-file basis, where the first person to file a trade mark application obtains ownership of the mark, it can be desirable to obtain trade mark protection prior to entering an overseas market. Securing trade mark protection in these jurisdictions at an early stage is advisable to prevent competitors or trade mark “squatters” from filing their own applications for an identical or similar trade mark. Patent rights can also provide protection for products and processes, while registered designs provide protection for the physical appearance of a product. Both patents and designs can provide a crucial market advantage, and allow exporters to obtain and hold market share by preventing competitors from copying successful products.

The EMDG scheme is designed to encourage small and medium sized Australian businesses to develop export markets. Accordingly, the business’s total annual income must be $50 million or less during the last financial year. Once a business has received two grants, they may have to provide evidence of export earnings or assess indicators of future export success in order to be eligible to receive third and subsequent grants.

The EMDG scheme allows eligible business to claim a range of activities. These activities include:

• maintaining one or more overseas representatives on a long term basis in foreign countries;
• engaging a consultant to undertake market research, or marketing activities;
• overseas travel expenses;
• any expenses associated with any communication with a potential buyer or a distributor, representative or consultant;
• providing free samples for promotional purposes;
• participation in a trade fair, seminar, in‑store promotion, international forum, private exhibition or similar promotional event;
• promotional literature;
• bringing one or more buyers to Australia;
• costs associated with the registration and insurance of intellectual property rights in foreign countries for intellectual property that was substantially developed in Australia.

Eligible intellectual property includes an intellectual property right that mainly resulted from work done in Australia, a trademark that was owned, assigned or first used in Australia, and know-how that mainly resulted from work done in Australia. Additionally, costs associated with engaging foreign attorneys to obtain trade mark and patent protection fall within the scope of the EMDG scheme. Further, insurance premiums paid for protection against possible infringement actions are also covered.

The EMDG scheme was recently amended to introduce changes in the EMDG Amendment Bill 2014 which:

1. increase the number of grants able to be received by an applicant from seven to eight;
2. reduce the minimum expenses threshold required to be incurred by an applicant from $20,000 to $15,000;
3. reduce the current $5,000 deduction from the applicant’s provisional grant amount to $2,500;
4. prevent the payment of grants to applicants engaging an EMDG consultant assessed to be a not fit and proper person; and
5. enable a grant to be paid more quickly where a grant is determined before 1 July following the balance distribution date.

The EMDG scheme covers past expenses, so even if you have been developing export markets for some time and have been unaware of the scheme, you may be entitled to claim expenses for past years. For more information about the EMDG scheme and how to apply, visit http://www.austrade.gov.au/export/export-grants