Guide to Plant Breeders' Rights in Canada

What are Plant Breeders' Rights?
Plant Breeders' Rights in Canada and other countries
The Plant Breeders' Rights Office (PBRO)
Who can apply for PBR?
Criteria varieties must meet
Variety denominations
Applying for Plant Breeders' Rights
The Examination Process
Grant of Rights
Enforcement and Infringement
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 Plant Breeders' Rights for a new plant variety, the owner obtains the exclusive rights to produce for sale, and to sell, reproductive material of the variety. The owner is then able to protect the variety from exploitation by others and can take legal action against individuals or companies that are propagating and selling reproductive material without permission.

The holder of the rights may also take action to prevent another person or business from using the approved denomination (variety name) of the protected variety when 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 came into force on August 1, 1990. The intent of the legislation is to stimulate plant breeding in Canada, to provide Canadian producers better access to foreign varieties and to facilitate the protection of Canadian varieties in other countries.

The International Union for the Protection on New Varieties of Plants (UPOV) is an organization concerned with the promotion of international cooperation in the area of plant variety protection. See the 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. A grant of rights is only valid in Canada. To obtain protection in other countries, the applicant must apply separately to the appropriate authority. Applications originally filed in Canada may serve as a basis for claiming priority for an application filed in another UPOV country.

3. The Plant Breeders' Rights Office

The Plant Breeders' Rights Office (PBRO) is part of the Canadian Food Inspection Agency (CFIA). The Office 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 Office examines 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, records details of incoming applications and assists the public in obtaining documentation pertaining to a right that has been published.

4. Who Can Apply for PBR?

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 person or it may be a company or organization. For the purposes of the PBR Act, a legal representative is an individual or business which has legally become the owner of a variety by some assignment. The applicant must also be a citizen of, a resident of, or have a registered office in Canada or a member country of the International Union for the Protection of New Varieties of Plants (UPOV).

All applications require a Canadian address to which correspondence from the Plant Breeders' Rights Office may be sent. Applicants residing outside of Canada must authorize a Canadian agent to act on their behalf throughout the PBR process and for the duration of the protection.

Application made by a legal representative

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 apply in his/her name. Documentation must be provided at the time of application to establish that the applicant is the legal representative when the applicant is not the breeder. Documentation must also be provided if the ownership of the variety is assigned to someone else after the application is filed. See the form "Legal Representative Statement/Assignment before the issue of Plant Breeders' Rights".

Application made through an agent

The role of the agent is to act on behalf of the applicant or holder for the purposes of the PBR Act. In this capacity, the agent has the authority to make changes recognized by the PBRO to the status of a PBR application or to the rights of a protected variety, including the ability to withdraw an application or surrender the rights. The agent will serve as the contact person for the PBRO. Documentation must be provided establishing that an agent has been properly authorized by an applicant or holder of a right. There are no special qualifications for the agent, although it would be in the interest of the applicant for the agent to have some knowledge of the candidate variety. The PBRO has the authority to refuse recognition of an appointed agent at any time. See "Authorization of Agent form".

5. Criteria Varieties must Meet

All species of plants are eligible for protection by Plant Breeders' Rights in Canada, excluding algae, fungi and bacteria.

The owner of a variety will be granted a Plant Breeders' Right if it can be demonstrated that the variety is:

new;
distinct;
uniform; and
stable.

The criteria used to determine whether a variety is eligible for protection are as follows:

New

The sale of a candidate variety prior to application for protection is restricted. Regulations covering the sale of varieties prior to applying for protection are as follows:

Sales of Varieties in Canada: Varieties may not have been sold in Canada prior to the date an application for protection has been accepted for filing in the PBRO.
Sales of Varieties outside of Canada: Varieties, excluding those of woody plants and their rootstocks, may have been sold outside of Canada for up to 4 years. Varieties of woody plants and their rootstocks may have been sold outside of Canada for up to 6 years prior to the date an application for protection has been accepted for filing in the PBRO.

Distinct

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

Uniform

A candidate 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 candidate 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 as described in the original description of the variety for which rights were granted.

6. Variety Denominations

Every candidate variety must be identified by a denomination (variety name). The name 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 request that the applicant submit another proposed denomination. For more information on variety denominations see the PBR Variety Naming Guidelines.

Changes to the proposed denomination of a variety may be made at any time during the application process before rights are granted. There is no fee associated with a change of the proposed denomination preceding grant of rights.

However, once a variety is granted rights, the approved denomination should not be changed except under the following circumstances:

the denomination granted is not the one proposed by the holder owing to error; or
additional information becomes available after the grant of rights which justifies a change of denomination.

Any changes to a denomination of a protected variety, requested by the holder, will require the payment of a fee (see Cost of Protection).

7. Applying for Plant Breeders' Rights

An application will be officially accepted when a completed application form including attachments and the filing fee have been submitted to the PBRO. The date when all items requested have been submitted will determine the effective date of an application. This 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 Plant Breeders' Rights - A Three Part Process.

The three items detailed below are included on the application form but are optional. However, if the applicant requires any of these items, they must be requested at the time the application is filed.

Protective Direction

A protective direction serves as a means to protect a candidate variety from the date when the application is first filed until the date when the rights are granted. With a protective direction, the applicant will be permitted to initiate legal action against any infringements which may occur while the application is pending. The applicant must agree not to sell propagating material of the variety while a 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.

Claiming Priority to an application previously filed outside of Canada

Priority may be claimed by an applicant submitting an application for a variety which previously has been filed for protection outside of Canada in a UPOV member country. The date the foreign application was originally filed would be considered as the date of filing in Canada. The advantage of claiming priority is that it would give an applicant 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 during the examination process to not be distinguishable, the breeder of the first variety to be filed is the one to whom rights will be granted. The breeder of the other variety will not be able to protect his/her variety on the basis that it is not distinct.

The applicant must apply to claim priority within one year from the date when the first application was originally filed in the UPOV member country. A copy of the preceding application, certified by the appropriate authority (translated into either French or English), must be submitted within 3 months after the claim has been filed with the PBRO. A request for priority must be applied for at the time of filing an application along with the appropriate fee.

Request for Exemption from Compulsory Licensing

Any request for exemption from compulsory licensing, including reasons for it, must be made at the time of application (see Compulsory licensing). The only reason for which an exemption from compulsory licensing is granted is that the applicant requires time to multiply and distribute propagating material of the variety.

8. The Examination Process

The examination of an application determines whether the candidate variety meets the requirements for distinctness, uniformity and stability (DUS). See Applying for Plant Breeders' Rights - Part Two - Examination.

Publication in Plant Varieties Journal

The PBRO publishes the Plant Varieties Journal containing information concerning plant breeders' rights. Details of every application filed or under examination, every grant of right and any changes to the details of a variety, including changes of ownership and changes of variety denomination, are published in the Plant Varieties Journal. This publication is released quarterly and is accessible through the PBR website. The Journal provides an opportunity for all interested persons to review the information concerning a variety and to object to the particulars of the published applications or variety descriptions if they feel the DUS requirements or any other requirements of the Act have not been met.

Objections

After publication in the Plant Varieties Journal, any person who considers that an 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 (when the application is under examination), any objection must be filed within 6 months of the publication. If, at the end of the 6 month 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 an application, after it has been filed, when:

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

Prior to rejecting the application, the applicant will be notified and given reasons for the intended rejection. The applicant may request the PBRO to reconsider the rejection by providing further evidence supporting his/her case.

Refusal of an Application

Following examination, an application may be refused grant of rights when the Commissioner:

is not satisfied, after consideration of the application and the results from tests and trials, that the candidate variety is new, distinct, uniform and stable;
has withdrawn a protective direction and finds no reason to grant a right;
has found that the application does not conform to the Act or Regulations.

Before an application is refused, the Commissioner will inform the applicant of the reasons for the refusal. The applicant will have an opportunity to make representations in support of his/her case.

Withdrawl of an Application

An applicant may withdraw an application at any time prior to a grant of rights. All papers and other material submitted in connection with the application will be returned to the applicant.

Abandoned Application

An application may be deemed abandoned at any time during the application or examination process upon failure of the applicant to proceed with the application within six months after the date of notice of any action by the Commissioner. It may be possible for the application to be reinstated where the application had been deemed abandoned.

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 PBRO will grant rights when the appropriate fee has been paid and confirmation received of the name of the holder of the rights and the variety denomination, including a statement that the denomination has not nor will be trademarked. (See Applying for Plant Breeders' Rights - Part Three - Grant of Rights)

Rights of the Holder

The holder of a plant breeders' right has the exclusive right to:

Sell propagating material of the protected variety in Canada, and produce propagating material in Canada for the purpose of selling;
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
License a third party to do any of the above acts, conditionally or unconditionally.

Any of these acts undertaken by an unauthorized person constitutes an infringement of the holder's rights.

Restrictions to the Holders' Rights

There are two exceptions to the breeder's right:

Research Exemption: Protected varieties may be used for breeding and developing new plant varieties without the permission of the holder of the rights.
Farmers' Privilege: Farmers may save and plant their own seed of protected varieties on their own land without infringing on the holder's rights.

Duration of the Rights

Plant Breeders' Rights are granted for a period of up to 18 years, effective from the date of issue of the rights certificate. At any time during this period the holder may surrender the rights on the variety. A plant breeders' right will remain in force so long as the holder pays the annual fee to maintain the rights. This renewal fee must be paid annually on the anniversary of the date the rights were granted.

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 throughout the term of protection. The Commissioner may request samples of propagating material at any time and the holder must provide the sample within 60 days of the request. The sample of propagating material must exhibit the same characteristics as described in the original variety description at the time when the right was granted. The Commissioner may also request to inspect the facilities used for maintaining the variety. Failure to comply with these requests may result in the revocation of the rights

Revocation of Rights

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;
did not meet the obligations imposed by a compulsory licence.

Before revoking rights, the Commissioner will inform the holder of the intended revocation. The holder will have an opportunity to make representations in support of his/her case.

Annulment of Rights

The Commissioner may annul rights when there is sufficient evidence that:

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

Before a right is annulled, the Commissioner will inform the holder of the intended annulment. The holder will have an opportunity to make representation in support of his/her case.

Assignment of Rights

Holders of PBR may assign their rights to another person/company. The PBRO will not become involved in these agreements. However, an assignment of a plant breeders' right 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 the form "Assignment of Plant Breeders' Rights".

Compulsory Licensing

A compulsory licence may be granted to anyone who can demonstrate to the Commissioner that the holder of the right of a particular variety has unreasonably refused to license them. The Commissioner may issue a compulsory licence to ensure that:

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

10. Enforcement and Infringement

It is the responsibility of the holder of the plant breeder's right 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 outlined below:

It is an offence for any person, when selling a variety, to not use the registered denomination for that variety (i.e. the denomination under which the variety was granted rights); to use another denomination for the variety, or one 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.
It is an offence for any person to make false representation, make a false entry in the register, 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 three years for offences listed in part(a) above, or for up to five 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.