Guide To Plant Breeders' Rights In Canada

• 1. What are Plant Breeders' Rights?
• 2. Plant Breeders' Rights in Canada and other countries
• 3. The Plant Breeders' Rights Office (PBRO)
• 4. Who can apply for PBR?
• 5. Criteria varieties must meet
• 6. Variety denominations
• 7. Applying for Plant Breeders' Rights
  • Protective Direction
  • Claiming Priority to an application previously filed outside of Canada
  • Request for Exemption from Compulsory Licensing
• 8. The Examination Process
  • Publication in Plant Varieties Journal
  • Objections
  • Rejection of an Application
  • Refusal of an Application
  • Withdrawal of an Application
  • Abandoned Application
• 9. Grant of Rights
  • Rights of the Holder
  • Restrictions to the Holders' rights
  • Duration of Rights
  • Maintenance of propagating material
  • Revocation of Rights
  • Annulment of Rights
  • Assignment of Rights
  • Compulsory Licensing
• 10. Enforcement and Infringement
• 11. Offences

1. What Are Plant Breeders' Rights?

Plant Breeders' Rights (PBR) are a form of intellectual property rights by which plant breeders can protect their new varieties in the same way an inventor protects a new invention with a patent.

With the grant of a PBR for a new plant variety, the holder of PBR obtains exclusive rights in relation to the propagating material of their variety. The holder is then able to protect the variety from exploitation by others and can take legal action against individuals or companies that are conducting acts, without permission, that are the exclusive rights of the holder.

The holder of PBR may also take action to prevent another individual or company from using the approved denomination (name) of their protected variety when that individual or company is selling propagating material of another variety of the same genus or species.

2. Plant Breeders' Rights In Canada And Other Countries

The Canadian Plant Breeders' Rights Act (the Act) came into force on August 1, 1990. Revisions to this legislation came into force on February 27, 2015 aligning it with the 1991 Convention of the International Union for the Protection of New Varieties of Plants (UPOV). The intent of the legislation is to stimulate plant breeding in Canada, to provide Canadian producers with better access to foreign varieties and to facilitate the protection of Canadian varieties in other countries.

UPOV is an international organization whose function is the promotion of international cooperation in the area of plant variety protection. See UPOV Website for addresses of all member countries.

Canada has been a member of UPOV since 1991. Membership in UPOV gives Canadian plant breeders the ability to protect their varieties in other member countries and gives Canadian producers improved access to protected foreign varieties. The rights are only valid in Canada. To obtain PBR in other countries, an applicant must apply separately to the appropriate authority. However, a PBR application originally filed in Canada may serve as a basis for claiming priority for a PBR application filed in another UPOV member country.

3. The Plant Breeders' Rights Office

The Plant Breeders' Rights Office (PBRO) is part of the Canadian Food Inspection Agency (CFIA). The PBRO functions, under the authority of the Commissioner of Plant Breeders' Rights, to secure the rights of plant breeders by granting protection for their new varieties. The PBRO examines PBR applications to determine whether applicants are entitled to receive a grant of rights. It publishes and distributes plant breeders' rights information via the Plant Varieties Journal.

4. Who Can Apply For Plant Breeders' Rights?

The applicant may be the breeder of a new variety or it may be the breeder's employer or "legal representative". The applicant may be an individual, a company or an organization. The applicant must also be a citizen of, reside in, or have a registered office in Canada, or be from a UPOV member country, agreement country or member country of the World Trade Organization (WTO).

All PBR applications require a Canadian address to which correspondence from the PBRO may be sent. Applicants or title holders residing outside of Canada must authorize a Canadian PBR agent to act on their behalf throughout the PBR process and for the duration of the protection.

Application made by legal representative

For the purposes of the Act, a legal representative is an individual, company or organization which has become the legal owner of a variety by assignment. The legal representative includes the breeder's executor, administrator, any assignee or successor in title to the rights. The legal representative must have the unconditional right to submit a PBR application in his/her name. Documentation must be provided at the time the PBR application is submitted to establish that the applicant is the legal representative in cases when the applicant is not the breeder. This same documentation is also required if the ownership of the variety is assigned to someone else after the PBR application is filed (See example of Legal Representative Statement – Assignment before the issue of Plant Breeders' Rights).

Application made through a PBR agent

The role of the PBR agent is to act on behalf of the applicant or the holder of PBR for the purposes of the Act. In this capacity, the agent has the authority to make changes to the status of a PBR application or to the rights of a protected variety including the withdrawal of the application or the surrender of the rights. The agent serves as the contact person for the PBRO. Documentation must be provided to establish that the agent has been authorized by the applicant or holder of PBR to act on their behalf in regards to PBR. Other than having a Canadian address, there are no special qualifications for the agent; although it would be in the best interest of the applicant for the agent to have some knowledge of the PBR process. The PBRO has the authority to refuse recognition of an authorized PBR agent at any time (See example of Authorization of Agent).

5. Criteria Varieties Must Meet To Be Protected By Plant Breeders' Rights

All species of plants are eligible for PBR protection in Canada, excluding algae, fungi and bacteria.

The owner of a variety will be granted PBR if it can be demonstrated that the variety is:

• New;
• Distinct;
• Uniform; and
• Stable.

The criteria used to determine the eligibility of a variety for PBR protection are as follows:

New

The sale of a variety prior to applying for PBR is restricted and its eligibility is dependent on when the PBR application is filed.

In the case of a variety for which a PBR application has been filed before February 27, 2015:

In the case of a variety for which a PBR application has been filed on, or after, February 27, 2015:

Distinct

A variety must be measurably different from all varieties of common knowledge which are known to exist at the time the application was filed. A variety of common knowledge includes a variety already being cultivated or exploited for commercial purposes or a variety described in a publication that is available to the public.

Uniform

A variety must be sufficiently uniform in its relevant characteristics, subject to the variation that may be expected from the particular features of its propagation. Any variation should be predictable to the extent that it can be described by the breeder, and should be commercially acceptable.

Stable

A variety must remain true to its description over successive generations. The variety must be stable in its essential characteristics to the degree where further generations of seed or other propagating material exhibit the same characteristics of the variety as described in the variety description which is used to establish a variety's eligibility for PBR.

6. Variety Denominations

A variety must be identified by a denomination (name). The denomination is proposed by the applicant and is subject to the approval of the Commissioner. The Commissioner may reject the proposed denomination if there is reasonable cause and, if such is the case, the Commissioner will request that the applicant submit another proposed denomination. For more information on variety denominations, see the PBR Variety Naming Guidelines.

Before rights are granted, changes to the proposed denomination of a variety may be made at any time during the application process until the Certificate of Plant Breeders' Rights is issued. There is no fee associated with a change of the proposed denomination before rights are granted. However, once a variety is granted rights, the approved denomination cannot be changed except under the following circumstances:

• as the result of an error, the denomination approved at the time of grant of rights is not the one proposed by the holder; or
• additional information becomes available after the grant of rights which justifies a change of denomination.

When a holder of PBR requests a change to the denomination of a protected variety, the payment of a fee is required (See Plant Breeders' Rights Fee Payment).

7. Applying For Plant Breeders' Rights

A PBR application will be accepted and assigned a filing date when a completed PBR application form including the additional required information, a sample of propagating material (if applicable) and the prescribed fees have been submitted to the PBRO. The date when all required items have been submitted to the PBRO will establish the effective filing date of the application. The filing date will be used to determine the priority of applications if two varieties under examination are found to be indistinguishable.

Obtaining a grant of rights for a new plant variety is a three-part process

(See Applying for PBR: A Three Part Process).

Protective Direction (before February 27, 2015) or Provisional Protection (on, or after, February 27, 2015)

A protective direction or provisional protection serves as a means to protect a candidate variety from the date when the PBR application is first filed until the date when the rights are granted. With a protective direction or provisional protection, the applicant is permitted to initiate legal action, once rights are granted, against any infringements which may occur while the application is pending.

In the case of a variety for which a PBR application has been filed before February 27, 2015:

If a protective direction is already in place, the applicant must agree not to sell propagating material of the variety while the protective direction is in force, unless it is for scientific research, for multiplying stock for sale back to the applicant, or for part of a transaction involving the sale of a right. The Commissioner may withdraw the protective direction in the event that the applicant fails to comply with these requirements or allows another to infringe the rights. As well, the applicant may remove the protective direction at any time during the application process by notifying the Commissioner.

In the case of a variety for which a PBR application has been filed on, or after February 27, 2015:

Provisional protection will be automatically granted; no request or additional fee is required for this interim protection. With provisional protection, there are no restrictions on the sale of a variety. During the time period of provisional protection, the applicant has the same rights as they would if the variety were granted rights. However, in order for an applicant to be entitled to equitable remuneration from any person having carried out any acts requiring the applicant's authorization, that person must have been notified in writing by the applicant that a PBR application has been filed under the Act.

The two following items included on the PBR application form are optional. If the applicant requires either of these items, they must be requested at the time the PBR application is filed.

Claiming Priority

Priority may be claimed by an applicant submitting a PBR application when a preceding PBR application has been filed outside of Canada in a UPOV member country, agreement country or WTO member country. The date when the preceding application was filed would be considered as the filing date of the PBR application in Canada. By claiming priority, the applicant would have precedence over competitors applying for rights for a variety that has identical characteristics. This means that if applications are received for two varieties which are found to be indistinguishable after the examination process, the variety whose PBR application has the earlier filing date would be granted rights. The applicant of the other variety would not be able to protect his/her variety because it is not distinct.

A claim for priority must be requested by the applicant within 12 months from the date when the first PBR application was filed in a UPOV member country, agreement country or WTO member country. A copy of the preceding application, certified by an authority from the UPOV member country, agreement country or WTO member country (translated into either French or English), must be submitted within the 3 months following the request for claiming priority. A request for claiming priority must be made at the time of filing a PBR application and include the prescribed fee.

Request for Exemption from Compulsory Licensing

A request for an exemption from compulsory licensing, including the reasons for the request, must be made at the time of filing a PBR application. It is important to note that the only reason for which an exemption from compulsory licensing will be granted is that the applicant "requires time to multiply and distribute propagating material of the variety". A request for an exemption from compulsory licensing will not always be granted, and will depend on the length of time required to proceed to the issue of the Certificate of Plant Breeders' Rights.

8. The Examination Process

The examination of a PBR application determines whether the variety meets the requirements for distinctness, uniformity and stability (DUS). Please refer to Applying for Plant Breeders' Rights: Part II Examination.

Publication in Plant Varieties Journal

The PBRO publishes the Plant Varieties Journal (PVJ) which contains information concerning plant breeders' rights. The details of every PBR application filed or under examination, every grant of right and any changes to the details of a variety, including changes of ownership or variety denomination, are published in the PVJ. It is released quarterly and posted on the PBR website. The PVJ provides an opportunity for interested persons to review information concerning a variety and to object to the particulars of the published PBR applications or variety descriptions when they are aware that the requirements for distinctness, uniformity and stability (DUS), or any other requirements of the Act have not been met.

Objections

After publication in the PVJ, any person who considers that a PBR application should be refused a grant of rights, or who questions the acceptability of a proposed variety denomination (name), may file an objection on payment of the prescribed fee. Objections may be filed at any time during the application process. However, once the variety description and comparative photographs are published, an objection must be filed within 6 months of the publication date. If, at the end of this 6 month objection period, there are no valid objections to a published variety description, the variety becomes eligible for grant of rights.

Rejection of an application

The Commissioner may reject a PBR application, after it has been filed, when it has been determined that:

• the candidate variety is not a new variety;
• the person making the application is not entitled to do so; or
• there is any other incompatibility with the Act or Regulations.

Before rejecting an application, the Commissioner will inform the applicant of the reasons for the intended rejection. The applicant will have an opportunity to make representation in support of his/her PBR application.

Refusal of an application

The Commissioner may refuse the grant of rights to a PBR application when he/she:

• is not satisfied, after consideration of the application and the results from the comparative tests and trials, that the candidate variety is new, distinct, uniform and stable; or
• has found that the application does not conform to the Act or Regulations.

Before refusing an application, the Commissioner will inform the applicant of the reasons for the intended refusal. The applicant will have an opportunity to make representation in support of his/her PBR application.

Withdrawal of an Application

An applicant, or PBR agent, may withdraw a PBR application at any time prior to a grant of rights. All documents and other material submitted in connection with the application will be returned to the applicant.

Abandoned Application

At any time during the application or examination process, a PBR application may be deemed abandoned if the applicant does not proceed with any activity within the 6 months following a request to do so by the Commissioner. It may be possible, within prescribed periods, for the application to be reinstated.

9. Grant Of Rights

If no valid objections have been received by the end of the 6 month objection period following publication of the variety description, the variety becomes eligible for granting of PBR. In order to grant rights to the holder, the PBRO must have received the prescribed fee accompanied by a confirmation of the name of the holder of PBR and variety denomination, as well as a statement confirming that no Canadian trademark or similar indication has been, nor will be, applied for or received for the denomination (See Grant of Rights in Applying for PBR: A Three Part Process).

Rights of the Holder

In the case of a variety for which PBR has been granted before February 27, 2015, the holder has the exclusive rights to:

• produce and sell propagating material of the protected variety in Canada;
• make repeated use of the protected variety as a step to commercially produce another variety (such as in the production of a hybrid);
• make repeated use of the protected variety for use in the production of ornamental plants or cut flowers; and
• authorize a third party to do any of the above acts, conditionally or unconditionally.

In the case of a variety for which PBR has been granted on, or after, February 27, 2015, the holder has the exclusive rights to:

• produce and reproduce propagating material of the variety;
• condition propagating material for the purpose of propagating the variety;
• sell propagating material of the variety;
• export or import propagating material of the variety;
• make repeated use of the protected variety as a step to commercially produce another variety (such as in the production of a hybrid);
• make repeated use of the protected variety for use in the production of ornamental plants or cut flowers;
• stock propagating material of the variety for the purpose of doing any of the above acts; and
• authorize a third party to do any of the above acts, conditionally or unconditionally.

NOTE: Any of these acts undertaken by an unauthorized person constitutes an infringement of the holders' rights.

Rights in Respect of Harvested Material

Only in the case of a variety for which PBR has been granted on, or after, February 27, 2015:

The holder may exercise his/her rights in respect of the harvested material, including entire plants or parts of plants, obtained through the unauthorized use of propagating material of the protected variety, unless the holder had a reasonable opportunity to exercise their rights in relation to that propagating material.

Exceptions to the Rights

The rights of the holder do not apply to any act performed for:

• Private and non-commercial purposes
  Protected varieties may be propagated when the propagated material is to be used for private and non-commercial purposes.
• Experimental purposes
  Protected varieties may be used in research.
• Plant Breeding
  Protected varieties may be used for breeding and developing new plant varieties.
• Farmers' Privilege
  Farmers may save harvested seed of protected varieties that are grown by them and plant the saved seed on their own land.

Duration of the Rights

In the case of a variety for which PBR has been granted before February 27, 2015:

PBR's are granted for a period of up to 18 years, effective from the date of issue of the Certificate of Plant Breeders' Rights.

In the case of a variety for which PBR has been granted on, or after, February 27, 2015:

PBR's are granted for a period of up to 25 years for the variety of a tree and vine (including their rootstocks), and 20 years for all other varieties of plants (excluding algae, bacteria and fungi), effective from the date of issue of the Certificate of Plant Breeders' Rights.

At any time during the period of grant of rights, the holder may surrender their rights. A PBR will remain in force as long as the holder pays the annual renewal fee to maintain the rights. This annual renewal fee must be paid on the anniversary date of issue of the Certificate of Plant Breeders' Rights.

Maintenance of Propagating Material

It is the responsibility of the holder of the rights to be able to supply the Commissioner with a sample of propagating material of the variety during the term of the grant of PBR. The Commissioner may request samples of propagating material at any time. The holder must be in a position to provide the sample within 60 days of the request. The sample of propagating material of the variety must yield plant material which exhibits the same characteristics as described in the original variety description when the rights were granted to the holder. The Commissioner may also request to inspect the facilities where the variety is being maintained. Failure to comply with these requests may result in the revocation of PBR.

Revocation of Rights

In the case of a variety for which PBR has been granted before February 27, 2015, the Commissioner may revoke rights when it has been determined that the holder:

• failed to pay the annual renewal fee;
• was unable to supply propagating material of the variety;
• was unable to prove that the variety was being maintained;
• sold propagating material of the variety while a protective direction was in force; or
• did not meet the obligations imposed by a compulsory licence.

In the case of a variety for which PBR has been granted on, or after, February 27, 2015, the Commissioner may revoke rights when it has been determined that:

• the holder failed to pay the annual renewal fee;
• the holder was unable to supply propagating material of the variety;
• the holder was unable to prove that the variety was being maintained;
• the holder failed to comply to a request to change the denomination; or
• the variety is no longer uniform or stable.

Before revoking rights, the Commissioner will inform the holder of the reasons for the intended revocation. The holder will have an opportunity to make representation in support of his/her Plant Breeders' Rights.

Annulment of Rights

In the case of a variety for which PBR has been granted before February 27, 2015, the Commissioner may annul rights when there is sufficient evidence that:

• the variety was not distinct when rights were granted; or
• the variety was sold prior to application in contravention to the Act or Regulations.

In the case of a variety for which PBR has been granted on, or after, February 27, 2015, the Commissioner may annul rights when there is sufficient evidence that:

• the variety was not distinct, uniform or stable when rights were granted;
• the variety was sold prior to application in contravention to the Act or Regulations; or
• the holder was not entitled to the grant of rights.

Before rights are annulled, the Commissioner will inform the holder of the reasons for the intended annulment. The holder will have an opportunity to make representation in support of his/her Plant Breeders' Rights.

Assignment of Rights

Holders of PBR may assign their rights to another individual, company or organization. The PBRO will not become involved in these agreements. However, an assignment of PBR is not considered valid by the PBRO unless it is registered, by the assignee, with the PBRO within 30 days after the assignment occurred (See Assignment of Plant Breeders' Rights Form.

Compulsory Licensing

A compulsory licence may be granted to anyone who can demonstrate to the Commissioner that the holder of PBR of a particular variety has unreasonably refused to authorize them to conduct any of the acts which are the exclusive rights of the holder. The Commissioner may issue a compulsory licence to ensure that:

• the variety is available to the public at reasonable prices;
• the variety is widely distributed;
• reproductive material of high quality is maintained; and/or
• royalty rates are kept reasonable.

10. Enforcement And Infringement

It is the responsibility of the holder of PBR to bring legal action against any person infringing on his/her rights. Court proceedings may be taken to the appropriate court in the province in which the infringement occurred.

11. Offences

Offences under the Act are as follows:

• a) It is an offence for any person, when selling a variety, to not use the registered denomination of that variety (i.e. the approved name by which the variety was granted rights); to use a different denomination other than the registered denomination of the variety, or to use a denomination that has been registered for another variety or could be confused with a registered denomination; or to falsely claim that the variety is a protected variety.
• b) It is an offence for any person to make false representation, make a false entry in the Register of Plant Breeders' Rights, falsify documents, or produce any false documentation.

A person committing any of these offences is liable on summary conviction to a fine of up to $5000. A person convicted on indictment for an offence may be fined up to $15,000 and/or jailed for up to 3 years for offences listed in part (a) above, or for up to 5 years for offences listed in part (b) above. For any of the offences listed, a corporation is liable to a fine of up to $25,000 on summary conviction and to a fine at the discretion of the court on conviction on indictment.