South Africa’s agricultural industry continues to thrive with commercial opportunity.  Horticultural businesses and farmers regularly breed or import plant varieties to drive local enterprise.  Given the significant financial investment involved, however, protecting plant varieties, and the commercial interests they represent, is essential to breeders.

In practice, there are generally two ways to a protect plant variety: registering a plant breeder’s right (PBR) over a new plant variety and controlling access to plant material through contract.  In South Africa, PBRs are registrable over new plant varieties under the South African Plant Breeders’ Rights Act No. 12 of 2018 (the “PBR Act”), provided a variety meets the registrability requirements.  Contractual protection, however, can also be effective, depending on the nature of the plants and the commercial interests at stake.

Plant Breeders’ Rights

A PBR is a registered intellectual property right over a plant variety that grants its holder statutory exclusivity for the duration of the right.  To obtain a PBR, an applicant must have standing to make an application for the grant of a PBR, and the subject variety must satisfy the requirements of novelty and distinctness, uniformity, and stability (collectively, “DUS”), as evaluated by the Department of Agriculture, Land Reform, and Rural Development.

Once a PBR is granted, for the duration of the PBR, any person wishing to undertake the following acts in relation to a protected variety must obtain prior authorisation from the PBR holder: production or reproduction (multiplication), conditioning for the purposes of propagation, sale or any other form of marketing, exporting, importing, or stocking for any of these purposes.  Authorisation is also required to undertake any of these activities in respect of harvested plant material of a protected variety.

A PBR in South Africa has a limited duration of 30 years for fruit trees, vines, sugar cane and potatoes, and 25 years for all other crops, calculated from the date the PBR is granted.  Once a PBR expires, the subject variety enters the public domain.

Contractual Protection

Contractual protection offers a flexible and commercially driven means of safeguarding plant varieties where statutory protection is unavailable or unattractive.  This is often the case where a subject variety does not meet the PBR registrability requirements, where a party lacks standing to apply for a PBR, or where long‑term strategic commercial control is sought separate of or beyond the term of PBRs.  However, contractual protection alone should not be pursued as a substitute for PBRs, where a PBR can be obtained, considering that contracts apply only inter partes while PBRs are objectively enforceable.

Through contract, a party can regulate access to propagating material and impose obligations and restrictions on nurseries, growers, and other value-chain participants.  Such agreements commonly govern propagation and multiplication practices, rights to harvested plant material and post‑harvest handling of harvested plant material, confidentiality of proprietary information, and the territories and manner in which a variety may be commercialised.  Contracts can also require that ownership of derivative varieties be assigned to the owner of the subject variety.  Effectively, a person can therefore create exclusivity over a plant variety in a contract.

While it is possible to contract on many practices in the value-chain of plant and/or plant material production, and that such contracts may take various forms, it is not possible to enter into licencing agreements in the absence of a registered PBR.  A licence agreement allows one party to infringe on the exclusive statutory rights under a PBR, without facing legal enforcement from the holder of such a PBR.  Entering into such an agreement remains, however, within the discretion of the holder of the PBR, at least for the sole-right period attached to said PBR.

Unlike PBRs, contractual protection is not subject to a fixed statutory term and may endure for as long as the contractual framework remains in place, making it particularly attractive for varieties with a long commercial lifespan. However, as noted above, contractual rights are enforceable only between the parties to the agreement and do not bind third parties who lawfully obtain plant material of a variety.  Accordingly, contractual protection is most effective where there is tight control over the supply of propagating material.

Conclusion

By their very nature, horticultural practices and plant material lend themselves to contractual protection, and the benefits of this approach hold clear appeal for businesses or farmers.  In practice, however, contractual protection is frequently deployed alongside registered PBRs, enabling rights holders to rely on statutory protection against third‑party infringement while using contracts to regulate the handling of plant varieties and plant material throughout the value-chain.  Adams & Adams is well positioned to assist businesses and farmers in obtaining and navigating protection in whichever form best suits their needs.

Source: Protecting Plant Varieties in South Africa - Adams & Adams