INTELLECTUAL PROPERTY RIGHTS

NATIONAL LEGISLATION - CANADA

Plant Breeders' Rights Act

PROTECTIVE DIRECTIONS

Protective directions

19. (1) An application for the grant of plant breeder's rights may include an application, accompanied by the fee prescribed in respect thereof, to the Commissioner for a protective direction respecting the plant variety in relation to which the application is made.

Undertaking

(2) Every person applying for a protective direction in accordance with subsection (1) shall undertake not to sell during the subsistence thereof propagating material of the plant variety unless the sale is made in good faith for purposes of scientific research, is part of a transaction involving the sale of the plant breeder's rights or consists of the sale of propagating material for
the purpose of accumulating stock for subsequent resale to that person.

Grant of protective direction

(3) Subject to subsection (4), where the undertaking required by subsection (2) is given, the Commissioner shall grant a protective direction to the person giving the undertaking and anything done while the protective direction is in force that, if the plant breeder's rights respecting the plant variety were granted, would constitute an infringement of those rights is actionable pursuant to this section as if it were such an infringement.

Refusal of grant

(4) Where the Commissioner has reason to suspect that a person whose application for the grant of plant breeder's rights includes an application for a protective direction is not entitled in accordance with section 7 or 8 to make the application for that grant, the Commissioner shall refuse to grant the protective direction.

Opportunity for representations before refusal

(5) The Commissioner shall not refuse to grant a protective direction to a person without first giving the person notice of the objections to it and of the grounds for those objections as well as a reasonable opportunity to make representations with respect thereto.

Withdrawal of direction

20. (1) The Commissioner may withdraw a protective direction if the person to whom it was granted so requests and, notwithstanding the absence of any such request, the Commissioner shall withdraw a protective direction if the Commissioner is satisfied that

(a) the person to whom it was granted has given an undertaking, whether or not for consideration, not to institute proceedings pursuant to section 19; or

(b) a breach of the undertaking given by the person pursuant to subsection 19(2) has occurred.

Procedure

(2) Section 36 applies, with such modifications as the circumstances require, in respect of the withdrawal of a protective direction as that section applies in respect of the revocation of plant breeder's rights.

Lapse of direction

21. As soon as an application for the grant of plant breeder's rights that includes an application for a protective direction is disposed of, whether by grant or refusal to grant those rights or otherwise, the protective direction lapses if it is in force at the time of that disposal.

CONSIDERATION AND DISPOSITION OF APPLICATIONS

Making objection to application for plant breeder's rights

22. (1) A person who considers that an application of which particulars have been published pursuant to section 70 ought to be refused

(a) on any ground that constitutes a basis for rejection pursuant to section 17, or

(b) in so far as an exemption referred to in subparagraph 75(1)(k)(i) is requested in the application,

may, on payment of the prescribed fee, except in the case of an objection made for the purpose of this subsection under the authority of the Minister of Industry after notice under subsection 70(2), file with the Commissioner, within the prescribed period after the date of publication, an objection specifying that person's reasons for so considering.

Copy of objection to be sent to applicant

(2) As soon as practicable after the filing of an objection pursuant to subsection (1), the Commissioner shall send a copy of the objection to the person in respect of whose application the objection is filed, unless the Commissioner rejects the objection in accordance with subsection (3).

Rejection of objection

(3) Where it appears to the Commissioner that there is good reason for rejecting an objection referred to in subsection (2), the Commissioner shall give the person making the objection a reasonable opportunity to show cause why the objection should not be rejected and, if the person shows the Commissioner no such cause, the Commissioner shall reject the objection and give notice accordingly to the person.

Opportunities for objector and applicant to be heard

(4) Where an objection to an application is filed with the Commissioner and is not rejected in accordance with subsection (3), the Commissioner shall not make or refuse the grant of plant breeder's rights on the application until the Commissioner has considered the objection and given the persons making the objection and application a reasonable opportunity to make
representations with respect thereto.

Upholding objection

(5) Where the Commissioner upholds an objection made under this section, the Commissioner shall refuse the application or request therein for exemption accordingly.

1990, c. 20, s. 22; 1995, c. 1, s. 52.

Consideration of applications

23. (1) After the publication under section 70 of the particulars of an application, the Commissioner shall, in order to ascertain whether it conforms to this Act, consider the application and all documents and any other material that are submitted to the Commissioner in connection with the application.

Tests and trials

(2) For the purpose of determining whether the plant variety to which an application under consideration pursuant to subsection (1) relates is a new variety, the Commissioner shall require such tests and trials with the plant variety, under such conditions, as the Commissioner deems necessary or expedient.

Fee and materials for tests and trials

(3) The person on whose part material is submitted for consideration pursuant to subsection (1) shall, for the purposes of tests and trials with the plant variety in question, without prejudice to the requirements of subsection 9(1) and at such time and place as the Commissioner directs,

(a) pay the appropriate prescribed examination fee; and

(b) furnish any

(i) propagating materials,

(ii) information, whether by way of photographs, drawings, documentation or otherwise, respecting the plant variety, and

(iii) specimens of the plant variety or of parts of it

that the Commissioner considers necessary for those purposes.

Acceptance of results of foreign tests and trials

24. (1) Where the Commissioner is able to obtain from an appropriate authority in any country such official results of tests and trials with the plant variety referred to in subsection 23(2) as the Commissioner considers acceptable, the Commissioner may rely on those results and the costs incurred in obtaining them pursuant to this subsection shall be paid to the Commissioner by
the person to whom the Commissioner is authorized by subsection 23(3) to give directions for payment of such examination fee as may be payable for the purposes of tests and trials with the plant variety.

Submission to foreign tests and trials

(2) The Commissioner may submit to the appropriate authority in a country of the Union or an agreement country, in order that any necessary tests and trials may be undertaken in that country with the plant variety in question, anything furnished in support, as required by subsection 9(1), of an application or in compliance with subsection 23(3) and the Commissioner may accept such results of any of the tests and trials as are furnished by that authority.

Prohibition during pendency of objection

25. Subject to the regulations, where an objection to an application has been filed under section 22, the Commissioner shall not, before disposal of the objection, carry out in respect of the application any functions of the Commissioner under section 23 or 24.

Abandonment of application

26. (1) An application shall be deemed to have been abandoned on failure of the applicant to prosecute the application, whether in default of compliance with subsection 23(3) or of payment of any fee pursuant to subsection 27(3) or otherwise, within the prescribed period after the taking on the part of the Commissioner, with respect to the application, of any action of which the Commissioner gives notice to the applicant.

Reinstatement of abandoned application

(2) An application deemed abandoned pursuant to subsection (1) may be reinstated

(a) within the prescribed time and on payment of the prescribed fee; or

(b) on petition presented to the Commissioner within the prescribed time subsequent to the time referred to in paragraph (a) and on payment of the prescribed fee if the petitioner satisfies the Commissioner that the failure to prosecute the application was not reasonably avoidable.

GRANT, REFUSAL AND DISPOSAL OF PLANT BREEDER'S RIGHTS

Grant of plant breeder's rights

27. (1) Where the Commissioner approves a denomination proposed by an applicant pursuant to section 14 and, after consideration of the application in accordance with subsection 23(1) and evaluation of the results of any tests and trials carried out with the plant variety to which the application relates, the Commissioner is satisfied that the application

(a) is made by the applicant with respect to a new variety, and

(b) otherwise conforms to this Act,

the Commissioner shall, except in the circumstances described in paragraph (2)(b), grant plant breeder's rights respecting that new variety to the applicant in accordance with subsection (3).

Refusal

(2) Where the Commissioner

(a) is not satisfied, after consideration of an application and evaluation of results, as described in subsection (1), or

(b) has, pursuant to paragraph 20(1)(b), withdrawn a protective direction and finds no reason considered by the Commissioner to be sufficient for nevertheless granting the plant breeder's rights to the applicant to whom the protective direction was granted,

the Commissioner shall refuse the application.

Registration of grant

(3) The Commissioner shall, on payment of the prescribed fee in respect of the grant under subsection (1) of plant breeder's rights,

(a) enter in the register the particulars required by section 63 in relation to the new variety in respect of which the rights are granted; and

(b) make the grant by issuing a certificate of registration in respect thereof to the applicant.

Opportunity for representations before refusal of grant

(4) The Commissioner shall not refuse the application of a person for the grant of plant breeder's rights without first giving the person notice of the objections to it and of the grounds for those objections as well as a reasonable opportunity to make representations with respect thereto.

Destroyed or lost certificates

(5) Where a certificate of registration issued pursuant to paragraph (3)(b) is destroyed or lost, a certified copy may be issued in lieu thereof on payment of the prescribed fee.

Grant to joint applicants

28. Where the Commissioner grants plant breeder's rights to persons constituting a remainder mentioned in subsection 7(2) or to other joint applicants, the grant shall be in the names of all those persons or other joint applicants.

Automatic licensing

29. The grant of the plant breeder's rights respecting a plant variety is subject to any conditions related to its category that are prescribed for the purpose of requiring the holder of those rights to authorize, pursuant to paragraph 5(1)(d), the doing of an act described in paragraphs 5(1)(a) to (c).

MAINTENANCE OF PROPAGATING MATERIAL

Maintenance of propagating material

30. (1) A holder of the plant breeder's rights respecting a plant variety shall

(a) ensure that the holder is in a position, throughout the period of registration of the holder as such, to furnish the Commissioner at the Commissioner's request with such propagating material of that variety as is capable of so producing it that its identifiable characteristics correspond with those taken into account for the purpose of granting those rights; and

(b) provide the Commissioner at the Commissioner's request with such facilities, free of charge, and with such information as the Commissioner deems necessary in order to be satisfied that the holder is causing the propagating material to be maintained and is otherwise complying with paragraph (a).

Inspection

(2) Facilities requested under paragraph (1)(b) may include facilities for inspection and the Commissioner has power to undertake the inspection accordingly for the purposes of that paragraph.

ASSIGNMENT OF PLANT BREEDER'S RIGHTS

Assignment of plant breeder's rights

31. (1) The Commissioner shall be, in the prescribed manner and within the prescribed period after the holder of plant breeder's rights has assigned them,

(a) informed of the name and address of the assignee; and

(b) furnished with such proof of service of a notice of the assignment on any person granted any of those rights by licence under section 32 as is prescribed or as the Commissioner, in the absence or in lieu of anything so prescribed or in addition thereto, requires.

Default precluding registration

(2) An assignee who has not complied with subsection (1) may not be registered as the holder of the plant breeder's rights.

Unregistered assignment void against subsequent assignee

(3) An assignment of plant breeder's rights is void against a subsequent assignee thereof for valuable consideration without notice who is registered as the holder of the rights unless, before the subsequent assignee is so registered, the person to whom that assignment is made is registered as holder of the rights.

COMPULSORY LICENCES

Grant of compulsory licences

32. (1) Subject to this section and the regulations, the Commissioner shall, on application by any person, where the Commissioner considers that it is appropriate to do so, confer on the person in the form of a compulsory licence rights to do any thing that the holder might authorize another person to do pursuant to paragraph 5(1)(d).

Objectives on granting compulsory licence

(2) In disposing of an application for, and settling the terms of, a compulsory licence pursuant to this section in relation to any plant variety, the Commissioner shall endeavour to secure that

(a) the plant variety is made available to the public at reasonable prices, is widely distributed and is maintained in quality; and

(b) there is reasonable remuneration, which may include royalty, for the holder of the plant breeder's rights respecting the plant variety.

Provision as regards propagating material

(3) A compulsory licence under this section may include terms requiring the holder of the plant breeder's rights affected by the licence to make propagating material available to the holder of the compulsory licence.

Variation and revocation of licence

(4) The Commissioner may at any time, on representations made by any interested person, extend, limit, vary or revoke a compulsory licence granted pursuant to this section.

Representations by persons adversely affected

(5) The Commissioner shall not dispose of any application for, or settle the terms of, a compulsory licence pursuant to this section or exercise jurisdiction pursuant to subsection (4) without giving interested persons who will be adversely affected by the Commissioner's decision a reasonable opportunity to make representations with respect thereto pursuant to such notice as the Commissioner deems it appropriate to give.

Compulsory licence not to be exclusive

(6) No compulsory licence that is an exclusive licence shall be granted pursuant to this section.

Concurrent compulsory and other licences permissible

33. (1) A person applying for a compulsory licence may be granted it pursuant to section 32, whether or not that or any other person has a licence, including an exclusive licence granted by the holder, in relation to the plant breeder's rights that the compulsory licence affects.

No contracting out

(2) An agreement is invalid to the extent that it purports to bind any person not to apply for a compulsory licence or to apply for a grant thereof on any particular terms.

ANNULMENT AND REVOCATION OF GRANTS

Annulment of grant

34. The Commissioner may, prior to the end of the term fixed by subsection 6(1) for a grant of plant breeder's rights, annul the grant if the Commissioner is satisfied that the requirements specified in paragraph 4(2)(a) or the conditions specified in subsection 7(1) were not fulfilled.

Revocation of plant breeder's rights

35. (1) The Commissioner may, prior to the end of the term fixed by subsection 6(1) for a grant of any plant breeder's rights, revoke the rights if the Commissioner is satisfied that

(a) their holder has failed to comply with paragraph 30(1)(a);

(b) their holder has failed, within the prescribed period, to comply with any request of the Commissioner referred to in section 30;

(c) the applicant for the grant of those rights committed a breach of an undertaking given by the applicant under subsection 19(2);

(d) their holder has failed, within the prescribed period, to pay the fee required under subsection 6(2); or

(e) there has been a failure to meet any obligation imposed by, and for the benefit of the holder of, a compulsory licence affecting any such rights by virtue of section 32.

Licensee's remedies not affected

(2) Nothing in paragraph (1)(e) prejudices any remedies lawfully available, apart from subsection (1), to a holder of a compulsory licence.

Procedure

36. (1) The Commissioner shall, before annulling a grant of plant breeder's rights or revoking those rights, give notice in writing that the Commissioner proposes to annul the grant or revoke the rights and the grounds on which the Commissioner proposes to do so to

(a) the holder of those rights;

(b) any person licensed under section 32 to exercise any of those rights; and

(c) any person who appears to the Commissioner to be otherwise sufficiently interested in any of those rights.

Objection

(2) Within

(a) the prescribed period after the date on which notice is given under subsection (1), or

(b) such further period as the Commissioner may allow,

any interested person may file with the Commissioner an objection against the intended annulment or revocation to which the notice relates.

Representations to be taken into account

(3) Where, under subsection (2), an interested person files an objection against any intended annulment or revocation, the Commissioner shall not carry out the intention or otherwise dispose of the objection unless the Commissioner has taken into account any representations made by interested persons with respect to the matters in question.

Opportunity to object and make representations

(4) Interested persons having objections to file in accordance with subsection (2) or representations to make for the purposes of subsection (3) shall be given a reasonable opportunity to do so pursuant to such notice as the Commissioner deems appropriate, but nothing in this subsection prejudices the requirements of subsection (1).

Carrying out annulment or revocation

37. The Commissioner's intention to annul the grant of plant breeder's rights pursuant to section 34 or to revoke them pursuant to section 35 shall be carried out on the grounds set out in the notice referred to in subsection 36(1) unless the grounds are shown to be false or, in the case of grounds specified in paragraphs 35(1)(b) to (e), any other cause considered by the
Commissioner to be sufficient for abandoning that intention is shown.

SURRENDER OF PLANT BREEDER'S RIGHTS

Surrender of plant breeder's rights

38. (1) The holder of the plant breeder's rights respecting a plant variety may surrender those rights by giving the Commissioner notice to that effect and, in the case of rights affected by a compulsory licence granted under section 32, by satisfying the Commissioner that a copy of the notice has been given to the holder of that licence.

Fees due not affected

(2) No surrender of plant breeder's rights shall affect any liability for any fee due and payable in respect of those rights before the surrender.

AGENTS

Non-residents

39. (1) Where a holder of plant breeder's rights, in the case of an individual, is not resident in Canada or, in the case of a corporation, does not have its registered office in Canada, the holder shall have an agent in respect of those rights who is resident in Canada.

Where agent lacking

(2) Notwithstanding anything in this Act, where an applicant or a holder of plant breeder's rights fails to

(a) comply with subsection 9(2) or subsection (1), or

(b) furnish the Commissioner, in writing, with the name and address of a new agent or with a new and correct address, as the case may require, on notice from the Commissioner that

(i) the agent of the applicant or holder has died or, pursuant to section 40, is refused continued recognition by the Commissioner, or

(ii) a letter sent by ordinary mail to the agent of the applicant or holder at the agent's address of which the Commissioner last had notice has been returned undelivered,

the Commissioner or the Federal Court may, without requirement of service on the applicant or holder, dispose of any proceedings under this Act after the continuance of that failure for the prescribed period or any further period allowed by the Commissioner or the Federal Court, as the case may be.

Other consequences not affected

(3) Nothing in subsection (2) affects any consequences, other than those for which that subsection provides, that the applicant or holder may, at law, suffer as a result of any failure described in paragraph (2)(a) or (b).

Refusal of recognition

40. The Commissioner may, for any gross misconduct or prescribed cause or any other reasonable cause considered by the Commissioner to be sufficient, refuse to recognize, or to continue to recognize, any person as authorized by an applicant or a holder of plant breeder's rights to act in the capacity of agent.

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