Ramon Periera and Louis van der Walt of the legal firm Adams and Adams
The amended Plant Breeders Act now allows hemp varietals to be registered, but makes no provision for plants that are “cross-bred” or have THC levels of higher than 0,2%.
South African entrepreneurs cannot register their cannabis genetics in terms of the Plant Breeders Act unless the THC content is below 0,2%. The Act also does not allow for patent protection of plants produced by biological cross-breeding, which effectively rules out most cannabis strains and places a lid on innovation.
The Cannabis for Private Purposes Bill does not any provision either for the registration of cannabis genetics although an amendment to the Regulations of the Plant Breeders Rights Act makes provision for Cannabis L, in other words hemp.
Lawyers Ramon Periera and Louis van der Walt of the firm Adams and Adams, drafted an article on the cannabis and intellectual property in June 2022.
Cannabiz Africa republishes parts of their article below
They write: “Although the Cannabis for Private Purposes Bill is unfortunately silent on the topic (of cannabis and intellectual property) , the Minister of Agriculture, Land Reform and Rural Development did, on 20 May 2022 by publication in the Government Gazette, amend Table 1 of the Regulations of the Plant Breeders’ Rights Act to include Cannabis L. as a kind of plant that is prescribed. Table 1 is however currently limited to hemp varieties.
They say that in order for the cannabis economy to grow “it will be important for those in the legal industry to unlock value elsewhere and arguably this can be obtained from leveraging intellectual property protection to establish South Africa as a dominant player in the market" but they point out its limitations.
“In terms of South African patent law, plants obtained through a micro-biological process, for example, transgenic manipulation of a plant genome, can be protected. Plants produced using biological means, for example, crossbreeding, are, however, specifically excluded from patent protection.
Plants generated from traditional biological means can still be protected using a lesser-known branch of intellectual property law rights, aptly referred to as plant breeders’ rights, which provide for certain monopoly rights to the breeders of new plant varieties. In terms of the Plant Breeders’ Rights Act No 15 of 1976 protection may be obtained in South Africa in respect of a new, distinct, uniform and stable variety of any kind of plant that is prescribed. In order to be registerable, a plant must thus be prescribed, i.e. named in the list of “kinds of plant” which is set out in Table 1 of the Regulations under the Act. This list is varied from time to time.
Unfortunately, the government has been slow to implement the necessary legal framework, which was naturally placed on the back burner whilst managing the recent worldwide coronavirus pandemic. As we slowly return to normal life the topic has been placed back on the table for discussion and action. Currently, however, South Africa is in legal limbo as far as commercial cannabis exploitation for the personal use of cannabis is concerned despite companies already having invested heavily in the eventual implementation of the legal framework.
It is believed that although it is now possible to file a plant breeders’ rights application in South Africa for a new cannabis variety, such a plant breeders’ rights application will however have to be accompanied by a certificate stating that the THC content of the leaves and flowering heads does not exceed 0.2%. It is not yet clear who can issue such a certificate.
An excellent example in the cannabis community of the opportunity which could have been afforded to a budding entrepreneurial South African breeder, had the possibility existed earlier to obtain plant breeders’ rights, is the internationally recognised strain referred to as “Durban Poison” which is a South African landrace variety.
This hypothetical South African entrepreneur could have realised the value in the South African strain but noted its low comparative yield and decided to rather crossbreed the South African variety with another higher yield variety (such as the “Skunk” cannabis variety), which would have resulted in a higher commercial yield (this is apparently what was done by a breeder in Amsterdam).
This hypothetical entrepreneur could then have registered the new variety using the Plant Breeders’ Rights Act (assuming the new variety complied with the requirements of the Act) and subsequently filed corresponding applications in other international markets where cannabis has also been legalised.
We also briefly mention that a complete intellectual property strategy for cannabis companies looking to take advantage of intellectual property rights would necessitate trade mark considerations. For example, the above hypothetical entrepreneur would register the plant breeders’ rights with a specific varietal name or denomination complying with the requirements of the Plant Breeders’ Rights Act whilst simultaneously filing a trade mark application for the new variety (e.g. “Durban Skunk”), to protect the brand name they would be using to sell the particular strain.
The denomination of the variety as registered would then have to be included with the packaging in which seed of the new strain is sold, but which can also include the brand name. The advantage of registering a trade mark is that it provides a perpetual monopoly over the brand name, provided the trade mark registration is renewed as prescribed.
So, once the plant breeders’ right has expired (after 20 years) the brand identity, “Durban Skunk”, associated with the particular strain would already have been established with consumers and the entrepreneur could continue to reap the benefit through that brand loyalty.
Interestingly, trade mark protection in some countries has also been extended to scents, which form a large part of the sensory experience related to the purchase of cannabis. It is unclear, however, how this may play out in the cannabis industry but as strains are known to have distinct scent profiles this form of protection may become more important as the industry develops further.
As more and more countries proceed to legalise cannabis so the global industry will continue to expand, bringing with it new opportunities for budding entrepreneurs. There is a natural push for larger players in the market to seek the protection afforded through traditional patents as these rights are viewed as strong. With this emphasis in place these larger players are focusing on the extracts, isolates and transgenic forms of cannabis, all of which form suitable subject matter for patent applications, potentially leaving a gap for smaller traditional breeders to obtain monopoly rights in new varieties by means of plant breeders’ rights.