Intellectual property rights available for cannabis
In Australia, cannabis-related products and the plants they are obtained from are eligible for protection by a range of IP rights. In particular, both patents and plant breeder’s rights may be held simultaneously for cannabis plants when the requirements discussed below are met.
Plant patents
Under Australian law, subject matter relating to plants is eligible for patent protection, only if it provides a practical solution to a technical problem and meets the usual patentability requirements. To be eligible, the subject matter must be novel and involve an inventive step, and must have involved the technical intervention of a person in its development. The specification must enable a person skilled in the art to reproduce the subject matter, which may require the deposit of plant reproductive material at a recognised depositary prior to filing the application.
Providing the above requirements are met, Australian patent legislation provides exclusive rights for up to 20 years from the application filing date in relation to plants per se or any part thereof, including reproductive material, genetic material, seeds, cells, or harvested material. Products derived from a qualifying plant including oils, fruits and pharmaceutical compounds are also eligible for protection as are methods and uses involving plant-based subject matter, such as breeding methods, tissue culture or transgenic methods and plants produced therefrom.
Plant Breeder’s Rights
Plant Breeder’s Rights (PBR) are also available for plant varieties in Australia, providing that the application is filed within 12 months of any commercial exploitation in Australia, or within four years (for most varieties; six years for trees or vines) of commercial exploitation overseas. Thus, PBR protection may still be available for a plant variety following commercial exploitation.
To be eligible for protection, a new plant variety must be distinct from other known varieties by at least one or more characteristics. These characteristics must be uniform across a tested batch of the variety and must be stable over multiple generations. In order to establish distinctiveness, uniformity and stability (DUS), it is necessary to engage the services of an accredited “Qualified Person”, who is an expert in testing new plant varieties and can certify DUS before the Plant Breeder’s Rights Office. Shelston IP has in-house Qualified Persons who can assist you with any aspect of a PBR application.
Australian plant breeder’s rights legislation provides exclusive rights over the production or reproduction, sale, conditioning for sale, importation or exportation of propagating material of the protected variety. In certain circumstances, harvested material and essentially derived varieties may also be covered under the Act.
Importantly, plant breeder’s rights offer a longer term of protection than patent rights. PBR protection essentially begins at formal acceptance of the application when provisional protection is provided, and extends for 20 years for most plant varieties from the date of grant (not filing) of the PBR. Again, trees and vines are treated differently, and are eligible for up to 25 years of protection from the date of grant.
Finally, Australian plant breeder’s rights legislation also provides protection for the name of a protected variety for the life the PBR registration.
Contrary to Law
Until recently, it was difficult to obtain patent protection for subject matter relating to cannabis plants, since under the Patents Act 1990, a patent may not be granted for subject matter that would be contrary to law. However, due to the recent changes to the law relating to the use of medicinal cannabis in Australia, patents relating to cannabis-related subject matter may now be granted since it can be argued that there is a legal use for the invention. In relation to plant breeder’s rights, there are no barriers under PBR legislation preventing protection for cannabis plant varieties. However, the requirement to prove DUS through field trial data would require obtaining a special license under the Narcotic Drugs Amendment Act 2016 if the field trials are held in Australia.
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