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September/October 2024: Food|Drugs

South Africa Updates Its Plant Breeders’ Rights Legislation

Pieter Visagie, Alison S. Levesley, and Tristan A. Wallace

Summary

  • Like the U.S., South Africa offers IP protection for new plant varieties through plant breeders’ rights.
  • The new Plant Breeders’ Rights Act proposes maximum quantities of propagating materials to which the farmers’ privilege exception applies and categorizes farmers based on their economic strength.
  • The new Act grants provisional protection to plant variety applicants from filing until grant or refusal and entitles applicants to equitable remuneration for infringement during this period.
  • The new Act defines phenotypic expressions (essential characteristics) more specifically and extends the same protections afforded to the initial variety to essentially derived varieties if separately protected.
South Africa Updates Its Plant Breeders’ Rights Legislation
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In the United States, three main types of intellectual property (IP) protection are available to breeders of new plant varieties: plant variety protection (issued by the Plant Variety Protection Office for “seeds, tubers, and asexually reproduced plants”), plant patents (issued by the U.S. Patent and Trademark Office (USPTO) for “asexually reproduced plants”), and utility patents (issued by the USPTO for “genes, traits, methods, plant parts, or varieties”). Similar types of protection for new plant varieties are available in other countries as well. This article helps to shed light on this area of law, which is fairly unfamiliar to many, with a focus on the new position of plant breeders’ rights in South Africa once the new Plant Breeders’ Rights Act takes effect.

New Plant Breeders’ Rights Act

In South Africa, the current plant breeders’ rights system is governed by the Plant Breeders’ Rights Act 15 of 1976, as amended (old Act). In light of policy considerations, technological advancements, pressure from industry, and socioeconomic considerations, the South African legislature passed the Plant Breeders’ Rights Act 12 of 2018 (new Act) to replace the old Act. The new Act was signed into law by South Africa’s president on March 27, 2019, and was published in the Government Gazette on March 29, 2019. However, it is not in force yet, and will only come into force when a proclamation to that effect is made in the Government Gazette. This is likely to occur only once regulations under the new Act have been issued. Finalization of such regulations is still pending and is subject to extensive consultation with industry and other key stakeholders.

As with any piece of new legislation, there is context behind the promulgation of the new Act. Invariably, there are political and socioeconomic factors that are always at play in South Africa. Also of significance, South Africa is a member of the International Union for the Protection of New Varieties of Plants (UPOV) and became a party to the International Convention for the Protection of New Varieties of Plants of 1978 (1978 Convention). In 1991, UPOV revised the 1978 Convention to provide for technological advancements in plant breeding (1991 Convention). Although South Africa has not yet assented to the 1991 Convention, the new Act seeks to align South Africa’s legislation more closely with its provisions.

Key changes in the new Act include provisions relating to farmers’ privilege to retain propagating material from a crop established with protected propagating material, provisions relating to provisional protection afforded to applicants for plant breeders’ rights, provisions defining essential characteristics that afford registrability, and provisions defining essentially derived varieties. Beyond the scope of this article are other changes relevant to plant breeders’ rights holders, including amendments to the term of protection for certain plants and the amendment of periods of sole right comprised by the duration of a plant breeder’s right, during which the registrar may not issue a compulsory license under a plant breeder’s right.

Farmers’ Privilege

The 1978 Convention, to which South Africa is a signatory, makes no mention of any exception to plant breeders’ rights, whereas the 1991 Convention does refer to such an exception. Exceptions of this type have globally taken on the colloquial phrase of “farmers’ privilege.”

Under Article 15(2) of the 1991 Convention, member states may legislate the following exception to the enforceability of plant breeders’ rights in their respective territories:

Notwithstanding Article 14, each Contracting Party may, within reasonable limits and subject to the safeguarding of the legitimate interests of the breeder, restrict the breeder’s right in relation to any variety in order to permit farmers to use for propagating purposes, on their own holdings, the product of the harvest which they have obtained by planting, on their own holdings, the protected variety or a variety covered by Article 14(5)(a)(i) or (ii).

Although not having assented to the 1991 Convention, the South African legislature amended the old Act in light of the wording of the 1991 Convention through the South African Plant Breeders’ Rights Amendment Act of 1996, which included a farmers’ privilege. Under Section 23(6)(f) of the old Act:

[A] person who procured any propagating material of a variety in a legitimate manner shall not infringe the plant breeder’s right in respect of the variety if he or she . . . is a farmer who on land occupied by him or her uses harvested material obtained on such land from that propagating material for purposes of propagation: Provided that harvested material obtained from the replanted propagating material shall not be used for purposes of propagation by any person other than that farmer.

This exception allows a farmer to save, use, and resow protected material, harvested from the use of legitimately obtained material, on their own holding, without infringing the relevant plant breeders’ rights. The exception is not subject to a quantity limitation.

In a policy document released by the South Africa Department of Agriculture, Forestry, and Fisheries in 2011, the government raised concerns regarding possible abuse of the exception. It envisaged that such alleged abuse may result because of the lack of a clear definition of the term “farmer” and there being no reference to the scale of production or scope of plant varieties.

In response to these concerns, Section 10 of the new Act provides for a more heavily qualified farmers’ privilege exception, subject to regulations to be issued by the Minister of Land Reform and Rural Development. Such regulations must prescribe the categories of farmers who would have such a privilege, the categories of plants that may be subject to such a privilege, the uses of the protected variety that are exempted, and conditions for labeling and payment of royalties. It is noteworthy that the provision may be interpreted to extend the privilege to use beyond the land occupied by the farmer based on the specification that the exception applies only to use of propagating material on land occupied by a farmer.

Examining the draft regulations under the new Act may clarify the legislature’s intent with Section 10 and the outcome the minister aims to achieve in regulating the farmers’ privilege exception. The draft regulations propose categories of plant varieties and maximum quantities of the propagating materials of such plant varieties to which the farmers’ privilege exception would apply. In addition, the minister hopes to differentiate between categories of farmers, based on their economic strength, to whom different privileges would attach. These categories include (1) vulnerable household producers, (2) subsistence household producers, (3) smallholder producers, (4) medium-scale commercial producers, and (5) large-scale commercial producers. Much of the debate around the draft regulations concerns the wording of these definitions and the enforcement thereof. There is also debate around use of the term “producer,” which may potentially attract a broader interpretation than the term “farmer.”

Under the draft regulations, certain categories of farmers (particularly those defined as vulnerable household producers, subsistence household producers, and smallholder producers) would not infringe a plant breeder’s right if such farmers produce certain prescribed maximum quantities of the prescribed protected varieties. The regulations suggest that room exists for an argument that the excepted use of propagating material by such categories of producers would no longer be limited to use on the land that such producers occupy. Such farmers also would not infringe a plant breeder’s right if they save on their own holding propagating material of such protected varieties for propagating purposes. Significantly, such farmers would be permitted to exchange, within their category of farmers, such propagating material.

The privilege to save propagating material from crops established with legitimately obtained propagating material would still be available to the larger scale farmers. However, larger scale producers would be required to: (1) notify, in writing, the breeder or holder of the plant breeder’s right of the volume of saved propagating material; and (2) pay the breeder or holder of the plant breeder’s right a reasonable remuneration for using the saved propagating material, in compliance with market conditions and in an amount “considerably lower” than the level of remuneration of the purchased propagating material of the saved variety. Such remunerations must be agreed upon by the breeder or holder of the plant breeder’s right and the farmer in a written license agreement. Larger scale producers would also be required to preserve the identity of the protected variety at all times by clearly indicating on the label of any container of such saved propagating material the name of the kind of plant or crop, the approved variety denomination, and the name and address of the producer of the propagating material.

The proposed regulations, applicable to medium- and large-scale producers, would be a significant departure from the provisions of the old Act in the sense that such farmers may now be subject to making royalty payments on the use of propagating material saved from a crop established using legitimately obtained propagating material. It can be assumed that the provisions seek to curb the potential for abuse by such producers, but the onus placed on the producers is not insignificant.

The minister’s power to regulate the farmers’ privilege exception under the new Act is now law and no longer subject to debate. It remains to be seen, however, how the minister will exercise that power. It is encouraging that extensive industry consultations around the wording of the regulations applicable to the farmers’ privilege are ongoing.

Provisional Protection

Under Section 14 of the old Act, an applicant can apply for the grant of provisional protection of a variety, otherwise referred to as a protective direction. However, the registrar’s issuance of a protective direction is subject to the applicant’s written undertaking that while the protective direction is in force, the applicant will refrain from selling or consenting to sell within South Africa any reproductive material of the variety in question. An exception is that the applicant may sell or consent to sell such material for the purposes of multiplication and testing.

Under Section 16 of the old Act, the protective direction may be terminated (1) if the registrar deems it necessary, (2) when the associated plant breeders’ right is granted, or (3) if the holder of the protective direction has failed to fulfill the terms of the undertaking to refrain from selling reproductive material. Put simply, if the holder sells the material for commercial purposes, the protective direction will be withdrawn. Also, such direction will be withdrawn if the holder has given an undertaking to another person that deprives the holder of the right to institute an action for compensation in respect of infringement of a plant breeder’s right or an action for damages in respect of an infringement of a plant breeder’s right.

Section 18 of the new Act provides that an applicant automatically has provisional protection in respect of a variety that is the subject of a pending application for a plant breeder’s right from the filing date of the application for a plant breeder’s right until the granting or refusal thereof. However, an applicant may not institute proceedings for infringement of such right during the period of provisional protection. It follows that once the right is granted, the holder thereof would have standing to institute proceedings. If the right is refused, the applicant could never have had standing to institute such proceedings. The new Act does not require the applicant to refrain from selling reproductive material. It thus appears that applicants could develop and sell such material while still retaining provisional protection, although not enforcing it.

The scope of provisional protection in the new Act further entitles the applicant to equitable remuneration from any person who, during the period of provisional protection, infringes on the holder’s rights, as per Section 7 of the new Act, as if the right had been granted. These protections are the same as those given to the holder of a plant breeder’s right.

Essential Characteristics and Essentially Derived Varieties

The 1991 Convention provides specific rules for varieties that are essentially derived from a protected variety. An essentially derived variety is a plant variety that is predominantly derived from a protected variety, is clearly distinguishable from the initial variety, and retains the expression of the essential characteristics resulting from the genotype of the initial variety. South Africa’s new Act reflects, to a great extent, the provisions of the 1991 Convention relating to the essential characteristics of a variety and essentially derived varieties.

The old Act defines “essential characteristics” as “the essential characteristics of a variety of a plant as expressed by means of a test or trial or any other acknowledged means of determining the characteristics of a variety of a plant.” The new Act provides a revised definition: “heritable traits that are determined by the expression of one or more genes, or other heritable determinants, that contribute to the principal features of the variety.” The definition in the new Act mirrors the definition of a “variety” in the 1991 Convention, which requires expression of characteristics in a given variety to result from a genotype or combination of genotypes.

There are significant changes where essentially derived varieties are of concern. Under Section 23(4) of the old Act, the protections afforded to the owner of a plant breeder’s right extend to an essentially derived variety. The definition of essentially derived variety is, however, phrased in generalized terms with reference to traits that are “expressed by means of a test or trial” and “any other acknowledged means.”

Under Section 7(3) of the new Act, protections afforded to the owner of a plant breeder’s right relating to an essentially derived variety are similar to the old Act; however, Section 7(3)(b) provides:

[A] variety must be regarded as being essentially derived from another variety if—(i) it is predominantly derived from the initial variety, or from a variety that is itself predominantly derived from the initial variety; (ii) it is clearly distinguishable from the initial variety; and (iii) it conforms to the initial variety in the expression of the essential characteristics that result from the genotype or combination of genotypes of the initial variety except for the differences which result from the act of derivation.

Under the new Act, South Africa has moved away from generally stated requirements to a more specific definition of the phenotypic expressions (essential characteristics) that result from genotype or combination of genotypes. This further protects the breeder and/or holder of the plant breeder’s right at its most fundamental characteristic: the genetic code of the variety or essentially derived variety.

Section 32(b) of the new Act extends the same protections afforded to the initial variety to the essentially derived variety if separate protection exists for the essentially derived variety.

Conclusion

In many respects, the updating of South Africa’s plant breeders’ rights legislation may be welcomed, specifically in those respects in which it is being brought more closely in line with modern norms. The farmers’ privilege, however, remains a hotly debated topic, particularly now that the minster has been given regulatory powers over the privilege. It will be interesting to see how the minister ultimately strikes a balance between the interests of rights holders and producers.

 

©2024. Published in Landslide, Vol. 17, No. 1, September/October 2024, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

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