INTELLECTUAL PROPERTY – plant variety rights – plant breeder’s rights – repeal of Plant Variety Rights Act 1987 (Cth) by Plant Breeder’s Rights Act 1994 (Cth) – where application for plant variety rights was filed and accepted under Plant Variety Rights Act 1987 – where application not granted until after repeal of Plant Variety Rights Act – whether grant of plant variety rights or plant breeder’s rights – whether grant of rights made under repealed Act – whether duration of rights granted calculated from date of acceptance or date of grant Held: no grant of plant variety rights under Plant Variety Rights Act – plant breeder’s right granted under Plant Breeder’s Rights Act – duration of right calculated from date of grant rather than date of acceptance – appeal allowed

Elders Rural Services Australia Limited v Registrar of Plant Breeder's Rights [2012] FCAFC 14 (29 February 2012)

Last Updated: 1 March 2012

FEDERAL COURT OF AUSTRALIA

Elders Rural Services Australia Limited v Registrar of Plant Breeder’s Rights [2012] FCAFC 14

Citation:	Elders Rural Services Australia Limited v Registrar of Plant Breeder’s Rights [2012] FCAFC 14
Appeal from:	Elders Rural Services Australia Limited v Registrar of Plant Breeder’s Rights [2011] FCA 384
Parties:	ELDERS RURAL SERVICES AUSTRALIA LIMITED (ACN 004 045 121) and CAITHNESS POTATO BREEDERS LIMITED v REGISTRAR OF PLANT BREEDER’S RIGHTS and SECRETARY OF THE DEPARTMENT OF INNOVATION, INDUSTRY, SCIENCE AND RESEARCH OF THE COMMONWEALTH GOVERNMENT OF AUSTRALIA
File number:	SAD 96 of 2011
Judges:	JACOBSON, SIOPIS AND NICHOLAS JJ
Date of judgment:	29 February 2012
Catchwords:	INTELLECTUAL PROPERTY – plant variety rights – plant breeder’s rights – repeal of Plant Variety Rights Act 1987(Cth) by Plant Breeder’s Rights Act 1994 (Cth) – where application for plant variety rights was filed and accepted under Plant Variety Rights Act 1987 – where application not granted until after repeal of Plant Variety Rights Act – whether grant of plant variety rights or plant breeder’s rights – whether grant of rights made under repealed Act – whether duration of rights granted calculated from date of acceptance or date of grant Held: no grant of plant variety rights under Plant Variety Rights Act – plant breeder’s right granted under Plant Breeder’s Rights Act – duration of right calculated from date of grant rather than date of acceptance – appeal allowed
Legislation:	Plant Variety Rights Act 1987 (Cth) (repealed) Plant Breeder’s Rights Act 1994 (Cth) Patents Act 1990 (Cth)
Cases cited:	Inco Europe Ltd v First Choice Distribution [2000] UKHL 15; [2000] 1 WLR 586 Minister for Immigration and Citizenship v SZJGV [2009] HCA 40; (2009) 238 CLR 642
Date of hearing:	17 August 2011
Place:	Adelaide
Division:	GENERAL DIVISION
Category:	Catchwords
Number of paragraphs:	61
Counsel for the Appellants:	Mr M Livesey QC with Mr S Phillips
Solicitor for the Appellants:	Lipman Karas
Counsel for the Respondents:	Mr GC McGowan SC with Dr WA Rothnie
Solicitor for the Respondents:	Australian Government Solicitor

IN THE FEDERAL COURT OF AUSTRALIA
SOUTH AUSTRALIA DISTRICT REGISTRY
GENERAL DIVISION	SAD 96 of 2011

ON APPEAL FROM THE FEDERAL COURT OF AUSTRALIA

BETWEEN:	ELDERS RURAL SERVICES AUSTRALIA LIMITED (ACN 004 045 121) First Appellant CAITHNESS POTATO BREEDERS LIMITED Second Appellant
AND:	REGISTRAR OF PLANT BREEDER’S RIGHTS First Respondent SECRETARY OF THE DEPARTMENT OF INNOVATION, INDUSTRY, SCIENCE AND RESEARCH OF THE COMMONWEALTH GOVERNMENT OF AUSTRALIA Second Respondent

JUDGES:	JACOBSON, SIOPIS AND NICHOLAS JJ
DATE OF ORDER:	29 FEBRUARY 2012
WHERE MADE:	SYDNEY (HEARD IN ADELAIDE)

THE COURT ORDERS THAT:

1. The appeal be allowed.
2. The judgment of the primary judge be set aside and in lieu thereof the Court makes the declarations and orders in paragraphs 3 to 6 below. 

THE COURT DECLARES THAT:

3. A declaration that the second appellant is the titleholder of plant breeder’s rights (PBR) under the Plant Breeder’s Rights Act 1994 (the Act) in respect of the potato variety “Nadine” (Solanum genus, tuberosum species).
4. A declaration that, subject to the provisions of the Act, the PBR granted to the second appellant in respect of the plant variety “Nadine” has a duration of 20 years commencing on 16 August 1995 and expiring on 16 August 2015. 

AND THE COURT FURTHER ORDERS THAT:

5. The appellants have liberty to apply for the purpose specified in para [60] of the Court’s reasons for judgment, such liberty to be exercised within 14 days of today.
6. The respondents pay the appellants’ costs of the appeal and of the proceeding below. 

Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011

IN THE FEDERAL COURT OF AUSTRALIA
SOUTH AUSTRALIA DISTRICT REGISTRY
GENERAL DIVISION	SAD 96 of 2011

ON APPEAL FROM THE FEDERAL COURT OF AUSTRALIA

BETWEEN:	ELDERS RURAL SERVICES AUSTRALIA LIMITED (ACN 004 045 121) First Appellant CAITHNESS POTATO BREEDERS LIMITED Second Appellant
AND:	REGISTRAR OF PLANT BREEDER’S RIGHTS First Respondent SECRETARY OF THE DEPARTMENT OF INNOVATION, INDUSTRY, SCIENCE AND RESEARCH OF THE COMMONWEALTH GOVERNMENT OF AUSTRALIA Second Respondent

JUDGES:	JACOBSON, SIOPIS AND NICHOLAS JJ
DATE:	29 FEBRUARY 2012
PLACE:	SYDNEY (HEARD IN ADELAIDE)

REASONS FOR JUDGMENT

INTRODUCTION

1. This appeal raises an issue of statutory construction under the Plant Breeder’s Rights Act 1994 (Cth) (the new Act) which repealed the Plant Variety Rights Act 1987 (Cth) (the old Act).
2. On the one hand the old Act provided that plant variety rights granted to an applicant subsisted for a period of 20 years from the date the application was accepted. On the other hand, the new Act provides that (leaving aside irrelevant exceptions) a plant breeder’s right (PBR) granted under the new Act lasts for 20 years from the date of grant.
3. What then is the duration of the rights granted to a plant breeder who applied for them under the old Act, and whose application was accepted under the old Act, but whose rights were not granted before the new Act came into force?
4. In the application commencing their proceeding, the appellants claimed a declaration that the PBR which the second appellant had been granted on 16 August 1995 had a duration of 20 years commencing on that date and expiring on 16 August 2015. Various ancillary orders were also sought.
5. Before the primary judge could make a declaration in the terms sought, he needed to be satisfied, first, that the grant of 16 August 1995 was indeed a grant of PBR under the new Act, and, secondly, that the 20 years ran from the date of that grant. In the present case his Honour found that the second appellant never obtained any right under the new Act and that it only ever had rights under the old Act. The primary judge dismissed the application. His Honour’s decision is reported: Elders Rural Services Australia Limited v Registrar of Plant Breeder’s Rights (2011) 91 IPR 532, [2011] FCA 384.
6. Thus, what began as a dispute between the parties concerning the term of protection available under the new Act has given rise to a question of even greater significance. Did the second appellant acquire any rights under the new Act?

THE AGREED FACTS

7. At the hearing before the primary judge the parties tendered an agreed statement of facts and issues (the statement of facts). A number of key facts emerge from the statement of facts.
8. The second appellant applied for plant variety rights in the potato variety known as Nadine on 21 May 1992. On 28 May 1992, at a time when the old Act was still in force, the Registrar of Plant Varieties advised the second appellant that its application had been accepted. On 16 August 1995, approximately three years after such acceptance, the second appellant’s application was granted. By that time the new Act had already come into effect.
9. There was a debate between the parties as to exactly when the second appellant’s application was accepted. The appellants say that it was not accepted until 3 July 1992. The respondents say that it was accepted on 28 May 1992. In the scheme of things, this is a small point, and one that is unnecessary for us to decide. For present purposes it may be assumed that the application was accepted on 28 May 1992.
10. The statement of facts indicates that the Registrar purported to grant the second appellant plant variety rights under the old Act. In this regard, the statement of facts refers to a certificate apparently issued by or on behalf of the Registrar which asserted that the rights in respect of Nadine had been granted to the second appellant under s 26(1) of the old Act. A copy of the certificate is included in the appeal book.
11. We infer that the certificate was issued by or on behalf of the person occupying the office of the Registrar of Plant Breeder’s Rights (the first respondent). In our view this must be so because, upon repeal of the old Act, the office of the Registrar of Plant Variety Rights ceased to exist.

THE AGREED ISSUE

12. The statement of facts as first presented to the primary judge identified the following question for determination:

Whether a grant of rights made under the new PBR Act but applied for under the old PVR Act enjoys a term of 20 years from the date of acceptance (the PVR Act term) or 20 years from the date of grant (the PBR Act term). If the answer is 20 years from the grant, then orders amending the term to expire on 16 August 2015 would be appropriate.

13. The primary judge raised with the parties a number of difficulties with the statement of facts. In response to his Honour’s concerns the parties did not agree upon any revised facts, but they did reformulate the question for determination to read as follows:

Whether a grant of rights made on or after 10 November 1994 in respect of an application under the old Act enjoys a term of 20 years from the date of acceptance (the old Act term) or 20 years from the date of grant (the new Act term). If the answer is 20 years from grant, then orders amending the term to expire on 16 August 2015 would be appropriate.

THE PARTIES’ ARGUMENTS BEFORE THE PRIMARY JUDGE

14. The appellants argued before the primary judge that the old Act applied for the purpose of considering the application but that any grant made was necessarily a grant of PBR under the new Act. In those circumstances, the appellants argued, the duration of the PBR granted to the appellant was 20 years from the date of grant rather than 20 years from the date of acceptance.
15. The respondents accepted that the old Act applied for the purpose of considering the application but argued that it also applied for the purpose of the grant, so that the 20-year period commenced to run from the date of acceptance.

THE RELEVANT STATUTORY PROVISIONS

The New Act

16. Section 78 of the new Act repealed the old Act. The new Act came into force on 10 November 1994. Hence, from that date the old Act was no longer in force.
17. Section 58 of the new Act established the office of the Registrar of Plant Breeder’s Rights. Section 61 provides that the Registrar must keep a register, known as the Register of Plant Varieties. Section 46 provides that, where the Secretary makes a grant of PBR, the Registrar must enter certain particulars of it in the Register.
18. Section 3 provides that the expression “PBR”, in a plant variety, means the plant breeder’s rights specified in s 11. Section 11 defines the exclusive right that is the plant breeder’s right. It provides:
    11. Subject to sections 16, 17, 18, 19 and 23, PBR in a plant variety is the exclusive right, subject to this Act, to do, or to license another person to do, the following acts in relation to propagating material of the variety:

(a) produce or reproduce the material;
(b) condition the material for the purpose of propagation;
(c) offer the material for sale;
(d) sell the material;
(e) import the material;
(f) export the material;
(g) stock the material for the purposes described in paragraph (a), (b), (c), (d), (e) or (f).

Note: In certain circumstances, the right conferred by this section extends to essentially derived varieties (see section 12), certain dependent plant varieties (see section 13), harvested material (see section 14) and products obtained from harvested material (see section 15).

19. Sections 12 and 13 are concerned with the extension of a person’s PBR to other plant varieties by declaration of the Secretary (s 12) or as of right in the case of certain dependent plant varieties (s 13). Sections 12 and 13 provide:
    12. Subject to section 23, if:

(a) PBR is granted to a person in a plant variety (the initial variety); and
(b) PBR is granted to another person in another plant variety; and
(c) the Secretary makes a declaration, on application by the first-mentioned person, that the other plant variety is an essentially derived variety from the initial variety;

the right granted in the initial variety extends, with effect from the date of the declaration, to that other plant variety.

13. Subject to section 23, if PBR is granted in a plant variety (the initial variety), the right extends to:

(a) any other plant variety that:

(i) is not clearly distinguishable from the initial variety; and
(ii) is clearly distinguishable from any plant variety that was a matter of common knowledge at the time of the grant of PBR in the initial variety; and

(b) any other plant variety that cannot be reproduced except by the repeated use of the initial variety or of a variety referred to in paragraph (a);

whether or not that other plant variety was in existence at the time PBR was granted in the initial variety.

20. Section 22(1)-(2) specifies that the duration of PBR in a plant variety (subject to exceptions not relevant to this case) lasts for 20 years from the date of grant. Section 22(4) provides that PBR in a plant variety that is a dependent plant variety begins on the day that the grant of PBR in the plant variety upon which it is dependent is made or the day that the dependent variety comes into existence, whichever last occurs.
21. Before an application for PBR can be granted, it must first be accepted. The Secretary must ensure that each application for PBR is given a priority date (s 28) and, as soon as practicable after the application has been lodged, decide whether to accept or reject the application.
22. When an application for PBR is accepted, the applicant obtains what is referred to as “provisional protection” (Pt 1, Div 3 of the new Act). He or she is taken to be the grantee of such PBR from the day of acceptance of the application until, relevantly, the time of its disposition (s 39(1)). Significantly, a person taken to be a grantee under Div 3 cannot commence any proceeding for infringement until his or her PBR is granted.
23. Before there can be a grant of PBR, the Secretary of the Department (see the definition in s 3) must be satisfied in relation to certain matters. Section 44(1) of the new Act provides:

44 (1) If:

(a) an application for PBR in a plant variety is accepted; and
(b) after examining the application (including the subsequent detailed description) and any objection to the application, the Secretary is, or continues to be, satisfied that:

(i) there is such a variety; and
(ii) the variety is a registrable plant variety within the meaning of section 43; and
(iii) the applicant is entitled to make the application; and
(iv) the grant of that right is not prohibited by this Act; and
(v) that right has not been granted to another person; and
(vi) the name of the variety complies with section 27; and
(vii) propagating material of that variety has been deposited for storage, at the expense of the applicant, in a genetic resource centre approved by the Secretary; and
(viii) if the Secretary so requires, a satisfactory specimen plant of the variety has been supplied to the herbarium; and
(ix) all fees payable under this Act in respect of the application, examination and grant have been paid;

the Secretary must grant that right to the applicant.

24. Part 9 of the new Act contains transitional provisions. Relevantly, ss 82, 83 and 84 of the new Act provide:
    82. (1) If:

(a) a person was granted plant variety rights in respect of a plant variety under the old Act; and
(b) those rights were still in force immediately before the commencing day;

then, subject to the regulations, those rights have effect, despite the repeal of the old Act, on and after that day, as if:

(c) this Act had been in force at the time when those rights were granted; and
(d) they had been granted at that time as PBR in that variety.

(2) Despite subsection (1), rights treated as if they had been granted as PBR under this Act continue in force for so long only as they would have continued in force if the old Act had not been repealed.
(3) Nothing in this section gives the holder of rights treated as PBR in a particular plant variety under this Act the right to claim PBR in respect of plant varieties that would, under this Act, be dependent plant varieties in relation to that particular plant variety.
(4) Nothing in this section gives the holder of rights treated as PBR in a particular plant variety under this Act the right to seek a declaration that another plant variety is an essentially derived variety of the particular plant variety unless PBR in that other plant variety was given only on or after the commencing day.

83. (1) If, before the commencing day:

(a) a person has made application for plant variety rights under the old Act; but
(b) the application has not been finally disposed of under that Act;

the provisions of the old Act are taken to continue in force, for the purpose of dealing with the application, and any objection that has been made before that day, or is made after that day, in relation to the application.
(2) If before the commencing day, criminal proceedings had been begun under the old Act but those proceedings had not been finally determined before that day, the provisions of the old Act are taken to continue in force, for the purposes of those proceedings.

84. (1) Subject to the regulations, this Act applies, on and after the commencing day, to any application, request, action or proceeding made or started under the old Act and not finally dealt with or determined under that Act before that day as if the application, request, action or proceeding had been made or started under a corresponding provision of this Act.

(2) Subsection (1) does not apply in relation to an application for plant variety rights, or to criminal proceedings, covered by section 83.

25. The “commencing day” of the new Act is defined by s 81 to be the day upon which the new Act commenced. Hence, for the purposes of Part 9 of the new Act the “commencing day” was 10 November 1994.

The Old Act

26. Section 12(1) of the old Act defined the exclusive rights in a new plant variety arising under the old Act in these terms:

12 (1) Plant variety rights, in respect of a new plant variety, are:

(a) the exclusive right to sell, including the right to license other persons to sell, plants of that variety;
(b) the exclusive right to sell, including the right to license other persons to sell, reproductive material of plants of that variety;
(c) the exclusive right to produce, including the right to license other persons to produce, plants of that variety for sale; and
(d) the exclusive right to produce, including the right to license other persons to produce, reproductive material of plants of that variety for sale.

27. Under the old Act a breeder of a new plant variety could make an application to the Secretary for plant variety rights in respect of that variety (s 15(1)). The right of a breeder of a new plant variety to make such an application was personal property capable of assignment or transmission either before or after the application had been made (s 15(3)).
28. When an application for plant variety rights was accepted under the old Act, the applicant also obtained what was referred to as “provisional protection”. The applicant was deemed to be the grantee of plant variety rights in respect of the relevant plant variety commencing on the acceptance of the application until, relevantly, the time of its disposition (s 22(1)). Here too, persons deemed to be grantees could not commence any proceeding for infringement of their rights until plant variety rights in question were granted to them under s 26 (s 22(7)).
29. Section 26(1) specified the matters in relation to that which the Secretary needed to be satisfied under the old Act before there could be a grant of plant variety rights. Section 26(1) provided:
    26. (1) Subject to this section, where an application for plant variety rights in respect of a plant variety is accepted:

(a) if the Secretary is satisfied that:

(i) there is such a plant variety;
(ii) the plant variety is a new plant variety;
(iii) the applicant is entitled to make the application;
(iv) the grant of those rights to the applicant is not prohibited by this Act;
(v) those rights have not been granted to another person;
(vi) there has been no earlier application for those rights that has not been withdrawn or otherwise disposed of;
(vii) the name of the variety would comply with section 17; and
(viii) all fees payable under this Act in relation to the application and the grant have been paid,

the Secretary shall grant those rights to the applicant; or

(b) if the Secretary is not so satisfied – the Secretary shall refuse to grant those rights to the applicant.

30. Significantly, the old Act did not contain any provision similar to s 12 of the new Act enabling the Secretary to make a declaration extending a person’s PBR to essentially derived varieties. Nor did the old Act contain any provision similar to s 13 of the new Act directed to extending PBR to certain dependent plant varieties.

EXTRINSIC MATERIALS

31. Both parties relied upon the Explanatory Memorandum to the Plant Breeder’s Rights Bill 1994 and the Second Reading Speech in the House of Representatives (Hansard, 24 August 1994, pp 157-288). We have emphasised the particular statements upon which most reliance was placed.
32. The Explanatory Memorandum begins:
    1. This Bill proposes to replace the Plant Variety Rights Act 1987 (“the PVR Act”) which would be repealed. The Bill provides for transitional arrangements between grants of plant variety rights as if they were plant breeder’s rights made under the Bill. Applications being examined on the day of proclamation will be examined under provisions of the PVR Act, and if successful, be considered to be plant breeder’s rights.

(emphasis added)

33. The Explanatory Memorandum also includes the following commentary in relation to what became ss 82 and 83 of the new Act:

Clause 82 – Plant Variety rights under old Act to be treated as PBR under this Act

102. Subclauses (1) & (2) provide that any rights granted under the old Act will be carried over as if these provisions in this Bill had been in force at the time those rights were granted, except that the unexpired portion of the right will be the same as it would have been under the old Act.
103. Subclause (3) provides that the holder of rights deemed as PBR in a plant variety under this Bill cannot claim PBR for dependent plant varieties in relation to that particular variety.
104. Subclause (4) provides that the holder of rights deemed as PBR in a plant variety under this Bill cannot seek a declaration that another plant variety is an essentially derived variety of that particular variety unless an application for PBR is made for that variety after the coming into force of this Bill.

Clause 83 – Applications for plant variety rights lodged and criminal proceedings begun before commencing day

105. Provides that any application for plant variety rights lodged or under examination or objections made before this Bill comes into force will be processed under the provisions of the old Act, but successful applications will, as provided for in clause 81, [sic] be granted a right under provisions of this Bill.

(emphasis added)

34. In the Second Reading Speech the Minister stated (at p 158):

The Plant Variety Rights Act 1987 will be repealed following the successful passage and proclamation of the Plant Breeder’s Rights Bill. Transitional arrangements to the new legislation will be convenient and simple to implement. All of the approximately 1000 applications that have been made for plant variety rights in the five years since the commencement of the scheme will be either deemed to have been granted PBR or, should they be in the process of being examined on the day of proclamation, they will continue to be examined under the old act and, if successful, they will be granted PBR. No grantee of PVR under the old Act will be disadvantaged by the transition arrangements.

(emphasis added)

THE PRIMARY JUDGE’S REASONS

35. The primary judge referred to relevant provisions of the old Act and the new Act. As already mentioned, s 44 of the new Act specifies the various matters about which the Secretary must be satisfied before granting PBR in a plant variety. His Honour contrasted the requirements of s 44(1) of the new Act with the requirements of s 26(1) of the old Act and drew attention to some of the differences between those sections.
36. The primary judge concluded that the new Act could not apply to the Secretary’s consideration of an application under the old Act because such an application was not for PBR and it was not deemed to be by s 83 of the new Act.
37. The key elements in the primary judge’s reasoning emerge at paras [65]-[76] of his Honour’s reasons. His Honour considered whether the provisions of the new Act could apply to an application for plant variety rights made under the old Act. His Honour said:
    65. The new Act could not apply; first, because of the provisions of s 83 itself; and secondly, because of the provisions of the new Act which govern applications only under the new Act.
    66. An application under the new Act is governed by s 44(1)(a) but that paragraph only allows the Secretary to consider an application for PBR in a plant variety. An application under the old Act is not an application for PBR and not deemed to be by s 83.
    67. Section 44 cannot be the vehicle for a consideration under the old Act for two reasons. Section 83(1) does not make it so. But, more importantly, the matters of which the Secretary must be satisfied under s 44 differ from those under the old Act. The application under the old Act could not cause the Secretary to be satisfied under s 44. For example, s 44 requires the Secretary to be satisfied of the matters in placita (vii), (viii) and (ix) of para (b) of subs (1) of s 44. An applicant under the old Act did not need to address (vii) and would not have needed to address (viii), and would not have paid the fees in (ix) under the new Act.
    68. There was no obligation under the old Act to provide the propagating material mentioned in s 44(1)(b)(vii) so the applicant under the old Act could not comply with that placitum. Moreover, there was no power under the old Act for the Secretary to require compliance with placitum (vii). No fees would have been paid under the new Act so the applicant would not have complied with placitum (ix).
    69. As well, s 44(1)(b) requires the applicant to comply with placitum (ii). It is not clear that an applicant under the old Act would, in all cases for which a valid application was being considered under the old Act, be able to bring the variety within s 43.
    70. Section 44 is designed to consider applications under the new Act, not an application that has been lodged under the old Act and not been disposed of under that Act.
    71. The other reason why s 44 does not govern applications under the old Act is that if s 44 is satisfied the applicant becomes entitled to PBR. That would mean that the applicant would obtain all the PBR given by the Act. The clear intention in s 82 of the new Act is not to give persons who enjoyed plant variety rights under the old Act the rights which s 82(3) and (4) exclude, which correlate with the matters in s 44(1)(b)(vii) and (viii).
    72. If the applicant’s argument were right, an applicant whose application had not been considered at the time of the enactment of the new Act would obtain those rights notwithstanding that the placita would not have been satisfied and notwithstanding Parliament’s intention to exclude old Act applicants from those rights.
    73. Section 44 therefore has no application to an application made under the old Act.
    74. In those circumstances, what is granted is that which is given under s 26 and that is a grant of the rights in s 26 for plant variety rights.
    75. It follows therefore that if an application had been made under the old Act which had not been dealt with at the time of the enactment of the new Act, the grant of any rights in respect of that application was determined by reference to s 26 of the old Act.
    76. The end result is that an application made under the old Act prior to the new Act will be granted or refused in accordance with the provisions of s 26 of the old Act. If it is granted, then it follows that the applicant is granted plant variety rights and the duration of those plant variety rights are governed by s 32 of the old Act which is for a period of 20 years commencing on the day on which the successful application for plant variety rights in respect of the plant variety was accepted.
38. His Honour concluded that a person whose application for plant variety rights had not been granted by the time the new Act took effect was only entitled to plant variety rights. His Honour described this as an unfortunate result but one that was unavoidable given the language of the relevant provisions.

THE APPEAL

39. The appellant filed a detailed notice of appeal challenging the primary judge’s decision. The respondents filed a notice of contention seeking to uphold his Honour’s dismissal of the application on grounds that are different to those relied upon by his Honour and different to those advanced by the respondents below. We shall consider the arguments raised in the notice of contention but it will not be necessary for us to refer to that document in any detail.

CONSIDERATION

40. We begin our consideration of the issues by observing that s 82 of the new Act could not apply in the circumstances of this case because the applicant was never granted plant variety rights in respect of a plant variety under the old Act. It is not possible to acquire rights under a statute after it has been repealed. Upon the repeal of the old Act it ceased to be law. It follows that either the second appellant acquired PBR under the new Act by reason of the grant that occurred on 16 August 1995 or it acquired no right at all.
41. We note that it was the appellants’ case that it was granted rights under the new Act consequent upon the grant of 16 August 1995. While the respondents argued that the grant of rights was made under s 26 of the old Act, they did not argue that the grant of 16 August 1995 could not be effective as a grant of rights under the new Act if a grant of rights under the old Act was made impossible by the repeal of the old Act.
42. Section 82(1) operated to substitute PBR in a plant variety for plant variety rights in that plant variety which had been granted under the old Act. This substitution was, it is true, subject to some qualifications in s 82(2), (3) and (4) which we have more to say about shortly. What must be recognised, however, is that the substitution of rights achieved by s 82(1) only applied in circumstances where there had already been a grant of plant variety rights under the old Act as at the commencing day. If there had been no such grant of rights, then s 82 could not apply.
43. Section 83(1), on the other hand, is expressed in terms that make it clear that it was the provision that was intended to regulate the disposition of applications filed under the old Act, but which were not yet the subject of a grant. It is highly unlikely that it was the legislature’s intention in passing the new Act that the rights attaching to such applications (expressly declared to be property rights capable of assignment either before or after acceptance) were to be extinguished or left to lapse without consideration by the Secretary. Under both the old Act and the new Act, the priority given to an application is determined by the filing date of the application.
44. It is clear to us that the purpose of s 83(1) was to ensure that applicants for plant variety rights under the old Act were not disadvantaged where their applications had not yet been disposed of before the new Act came into force. Thus, s 83(1) ensured that an application could not be rejected, and the grant of an accepted application could not be refused, on account of an objection that was not available under the old Act. It did this by providing that the provisions of the old Act were to be taken to continue in force for the purpose of dealing with the application and any objection that had been made before the commencing day.
45. Section 83(1) of the new Act does not expressly provide that a grant of an application to which it applies takes place under the new Act. But that is hardly surprising given that the new Act repealed the old Act. We think the implication which emerges from s 83(1) when it is read in context is that a grant of a right in a plant variety occurring after the repeal of the old Act is necessarily a grant of PBR. As we have already noted, if an applicant had any right stemming from a grant made after his or her application and any objections to it had been considered by the Secretary (in light of provisions of the old Act taken to continue in force for that purpose), then it could only be a grant under the new Act.
46. The respondents argued that the provisions of the old Act concerning the grant of applications for plant variety rights and the duration of such rights continued to apply to applications lodged prior to the repeal of the new Act because such provisions were, by dint of s 83(1), also to be taken to continue in force. But the difficulty with the respondents’ argument is that it does not explain how a person in the position of the second appellant ever obtained PBR under the new Act.
47. The respondents pointed to s 82(1) and argued that the grant to the second appellant would be a grant to which it applied. However, it is impossible to regard a grant of rights in a plant variety that occurs after the repeal of the old Act as a grant under s 26 of the old Act. Whatever else one might say about the respondents’ argument, it is impossible to hold that the grant made on 16 August 1995 was one that conferred rights that were still in force before the commencing day (ie 10 November 1994).
48. The respondents’ submissions emphasised that s 83 does not include restrictions on the rights given to applicants under the old Act corresponding to those imposed upon grantees under the old Act by subs (2), (3) and (4) of s 82 of the new Act. In responding to this submission it is necessary to look at the relevant subsections closely.

Section 82(2)

49. The intent behind s 82(2) is clear. In the absence of s 82(2), a person who had already obtained a grant of plant variety rights under the old Act would obtain an additional period of protection. As s 82(2) itself makes clear, Parliament intended that a person granted plant variety rights under the old Act would not gain any additional period of protection as a result of the new Act coming into effect.
50. Under the old Act, if a grant of plant variety rights was made, the grantee could sue for acts of infringement that took place after acceptance of the application. In other words, a grant of plant variety rights carried with it the right to sue for acts of infringement dating back to acceptance. But if there was no grant of plant variety rights under the old Act then there never was a right to sue under the old Act. Hence, in the case of a person whose application was accepted, but not granted, under the old Act, he or she never acquired any right to sue for infringement. This is what distinguishes the position of the second appellant from that of a person who obtained a grant under the old Act. The second appellant never had a right to sue under the old Act because it never obtained a grant under the old Act.
51. We think the suggestion that, if s 82(2) did not apply to the grant of 16 August 1995, the second appellant would obtain an extension of the period of protection beyond that to which it would otherwise be entitled, is based upon a misconception.

Section 82(3)

52. Section 82(3) of the new Act is curiously expressed but we think its effect is clear enough: s 82(1) does not give a person who holds rights granted under the old Act that are treated as PBR under the new Act any right in respect of plant varieties that would be within the exclusive right in so far as it is extended by s 13 of the new Act.
53. Accordingly, we see s 82(3) as a neutral consideration in the context of the present dispute. We can understand why Parliament might have wished to ensure that the scope of rights granted under the old Act was not extended by operation of s 13 of the new Act. For example, difficulties might arise if a plant breeder had taken a licence from the holder of plant variety rights granted under the old Act that did not extend to dependent plant varieties.

Section 82(4)

54. Section 12 of the new Act applies in circumstances where there have been grants of PBR to two persons in related plant varieties. It allows for the Secretary to make a declaration that PBR granted in an initial plant variety extends to the other plant variety. Such a declaration takes effect from the date it is made.
55. It seems clear from s 82(4) that it was Parliament’s intention that a person who had obtained a grant of plant variety rights under the old Act need not be concerned by the possibility of a declaration made under s 12 affecting his or her rights adversely. This is understandable given that the old Act did not contain any provisions corresponding to s 12 of the new Act. It is also consistent with the Minister’s Second Reading Speech which made clear that a person granted plant variety rights under the old Act would not be disadvantaged by the transitional arrangements.
56. We should add in relation to the Minister’s Second Reading Speech that it reflects an understanding of the operation of the transitional provisions that is not inconsistent with our interpretation of them. According to the Second Reading Speech, applications lodged under the old Act would either be deemed to have been granted PBR or, should they be in the process of being examined on the day of proclamation of the new Act, they would continue to be examined under the old Act and, if successful, granted PBR. On one view, any application that had not yet been the subject of a grant was necessarily an application that was still under examination in the broad sense of that word. Unlike other intellectual property statutes, the old Act did not delineate “examination” as a separate stage in the process that may ultimately result in a grant of rights: cf Ch. 3, Pt 2, Div 1, of the Patents Act 1990 (Cth) and Pt 4, Div 1, of the Trade Marks Act 1995 (Cth).
57. Finally, we note that the appellants also relied upon the following statement of Lord Nicholls of Birkenhead in Inco Europe Ltd v First Choice Distribution[2000] UKHL 15; [2000] 1 WLR 586 at 592:

It has long been established that the role of courts in construing legislation is not confined to resolving ambiguities in statutory language. The court must be able to correct obvious drafting errors. In suitable cases, in discharging its interpretative function, the court will add words, or omit words or substitute words.

See also Minister for Immigration and Citizenship v SZJGV [2009] HCA 40; (2009) 238 CLR 642 at para [9] where Lord Nicholls’ observations were referred to with apparent approval by French CJ and Bell J.

58. We do not think the present case is one that calls for the application of such an approach because we do not think it is necessary to add words, omit words or substitute words to the new Act in order to give effect to Parliament’s intention. As we have explained, we consider it implicit in s 83 of the new Act that any grant made in connection with an application to which it applies will be a grant made under the new Act.

DISPOSITION

59. We are satisfied that the learned primary judge erred in concluding that the second appellant was granted plant variety rights under the old Act rather than the new Act. We are also satisfied that, on the proper construction of the new Act, the second appellant was granted PBR in respect of the potato variety “Nadine” on 16 August 1995 and that, subject to the provisions of the new Act, such PBR lasts for 20 years from that date. The appeal should be allowed and there should be declarations substantially in the form sought in the notice of appeal. The respondents must pay the appellants’ costs of the appeal and the proceeding below.
60. The appellants sought ancillary relief that travels beyond what may be required and which was not the subject of any oral argument. We shall grant the appellants liberty to apply within 14 days should they wish to press their claim for any such relief.
61. There will be declarations and orders accordingly. 

I certify that the preceding sixty-one (61) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justices Jacobson, Siopis and Nicholas.

Associate:
Dated: 29 February 2012