Simpson Grierson Partner Richard Watts, Special Advisor Sarah Chapman and Senior Associate Raymond Scott discuss the MBIE’s review of the Plant Variety Rights Act 1987. Among other issues, they note: “Interested parties are able to apply for compulsory licences for protected varieties in certain circumstances. Are there problems with the functioning of the current compulsory licence scheme?”
More than thirty years after it was introduced, New Zealand’s Plant Variety Rights Act 1987 (PVR Act) is being reviewed by the Ministry of Business, Innovation and Employment (MBIE). MBIE has published an Issues Paper. Submissions on issues for the review have now closed.
The PVR Act provides a regime for granting exclusive commercial rights to propagate new plant varieties. To be eligible for a Plant Variety Right (PVR), a variety must be new, sufficiently uniform and stable as well as distinct from commonly known varieties. The regime under the PVR Act is based on UPOV 78, an older version of the International Convention for the Protection of New Varieties of Plants. The Comprehensive and Progressive Agreement for Trans-Pacific Partnership (CPTPP) requires New Zealand to give effect to, or accede to, a newer convention, UPOV 91.
UPOV 91 generally provides stronger protection for rights owners than UPOV 78. Many of New Zealand’s major trading partners, including Australia, have adopted UPOV 91. However, adoption of UPOV 91 has not been without controversy. For example, Norway rejected the adoption of UPOV 91 in 1995.
What are the key issues for the review?
MBIE is aiming to better understand how the PVR regime functions in practice, how Māori interests are protected, and the issues and opportunities for change. A key part of the review will be assessing how New Zealand should implement its obligations under the CPTPP. Below is a summary of some of the particular issues and questions raised in MBIE’s Issues Paper:
- Farm-saved seed: Unless restricted contractually, farmers are not restricted under the PVR Act from saving seed harvested from their crop to sow next season’s crops. Should farmers have to get permission from PVR owners before sowing farm-saved seed of protected varieties?
- Harvested material: The focus of the regime under the PVR Act is on rights over propagating material (ie seeds and cuttings). The PVR Act currently provides limited rights over harvested material, such as fruit and cut flowers. Are there problems with the current scope of rights over harvested material?
- Distinctiveness and similar varieties: Are there problems with the current approach for assessing distinctiveness? Should varieties which have close similarity to an existing variety, known as ‘essentially derived varieties’ under UPOV 91, be eligible for protection?
- Compulsory licences: Interested parties are able to apply for compulsory licences for protected varieties in certain circumstances. Are there problems with the functioning of the current compulsory licence scheme? Does there need to be more clarity about what the Commissioner must and may consider when considering the grant of a compulsory license?
- Enforcement: As PVRs are proprietary rights they can be protected by pursuing civil claims against those who infringe them. The PVR Act also provides for a range of offences. Do the infringement provisions operate as sufficient deterrent under the PVR Act and are PVR holders able to enforce their rights effectively?
- Wai 262 Report and the Treaty of Waitangi: The Waitangi Tribunal’s Wai 262 report made recommendations relating to the treatment of genetic and biological resources of taonga species and mātauranga Māori. The Waitangi Tribunal found that the current PVR regime did not provide sufficient protection for kaitiaki – the concept of Māori guardianship of sky, sea and land. As such, the Waitangi Tribunal recommended the establishment of a Māori advisory committee to advise the Commissioner of PVRs on kaitiaki interests. How does the PVR Act impact the kaitiaki relationship? What role could a Māori advisory committee have in supporting the Commissioner?
Where to from here?
Now that the public consultation period has closed, MBIE is reviewing the submissions received and will then develop an options paper. That paper will be used to consult on possible options for change to New Zealand’s PVR regime. MBIE has indicated that the options paper may be released in mid-2019.
Richard Watts co-heads the firm’s intellectual property group, advising a number of the world’s leading companies in the FMCG, pharmaceutical, IT, and sports industries. His practice covers both non-contentious and contentious IP. Richard works with a number of leading pharmaceutical companies and research institutions, particularly in international licensing and enforcement. This work includes development and implementation of patent and IP commercialisation strategies for leading local and international businesses. Richard is also highly regarded in copyright law, particularly in relation to IT and new technologies. Contact Richard at [email protected] or connect via LinkedIn.
Sarah Chapman is a special counsel in the firm’s intellectual property group. Sarah is experienced in all aspects of intellectual property having specialised in the area since 1996. Her work experience includes four years in London working as in–house counsel for the BBC and Nestlé UK and for a large international law firm. Sarah advises clients on a wide range of intellectual property–related issues including strategies for protection, exploitation, transfer, and enforcement. She specialises in trade mark law, specifically, providing strategic advice on the trade mark portfolio management, registrability, infringement, and licensing to both local and international clients. Sarah’s significant transactional experience includes advising on due diligence for mergers, acquisitions, and initial public offerings, drafting and negotiating intellectual property–related contracts, and advising on all aspects of franchising (including franchise relationships), and drafting franchise–related agreements and documentation. Sarah also has experience advising on the laws surrounding the sale and marketing of goods and services (including advertising standards compliance, sales promotion schemes, gambling and intellectual property issues), and intellectual property and commercial aspects of sponsorship arrangements. Contact Sarah at [email protected]
Raymond Scott is a senior associate in the firm’s intellectual property group. He has several years’ experience in commercial and contentious aspects of IP, including trade marks, passing off, domain names, copyright, designs, confidential information, and patents. He advises regularly on trade mark protection strategies for local and international clients, and manages New Zealand border protection portfolios for a number of well-known brands. Raymond’s broad transactional experience includes advising on IP due diligence for mergers and acquisitions, and drafting and negotiating licences and other IP-related agreements. He also acts regularly for clients in contentious IP issues, and has assisted with trade mark matters before the Court of Appeal, High Court and Intellectual Property Office of New Zealand. Of particular interest to Raymond are IP matters relating to indigenous rights and cultural knowledge, and the arts and entertainment industries. Contact Raymond at [email protected]