Seminar on the breeder’s right in relation to harvested material
Court cases in China, focusing on trees
“San Hong Mi You”Pomelo Case：Propagating Material and Harvested Material of Pomelo
LI Judan
May 12，2021
Dear Mr. Peter Button，thank you very much for your inviting me to attend this seminar and make a presentation. I am Li Judan, come from Institute of Law, Chinese Academy of Social Science. The topic of my presentation is to introduce the“San Hong Mi You” pomelo case in China. The key point in this case is how to distinguish the propagating material and the harvested material of the protected variety in tort litigation.
The presentation has 3 chapters, namely a short introduction of relevant provisions of the scope of breeder’s right in China, then as the main part summaries of the case, that will show the fact, focus of the dispute and conclusion of the case, and finally a discussion and suggestion.
Relevant Provisions in China
Article 28 of the Seed Law is the basic provision concerning the scope of breeders' right in China. It provides that “breeders have the exclusive right to the protected variety. Production or reproduction, selling or other marketing the propagating material of the protected variety, and production or reproduction, selling or other marketing the propagating material of the variety for commercial purposes, whose production requires the repeated use of the protected variety, shall require the authorization of the breeder, unless otherwise provided in this Law, relevant laws and administrative regulations.” The unless otherwise provided " mentioned above refers to the "breeding and other research activities exceptions" and " exceptions to farmers' save seed" as stipulated in Article 29 of the Seed Law.
Summaries of the Case
The fact
The “San Hong Mi You” case is Cai Xinguang vs. Guangzhou Runping Commercial Co . , Ltd. Guangzhou intellectual property Court established in 2014 held the first instance judgment of the case, and the intellectual property Court of the Supreme people's Court established in 2019 held the second instance judgment in 2019. The accused variety in this case is one kind of pomelo, the Chinese denomination is “San Hong Mi You”. The Plaintiff（Cai Xinguang） is the breeder and the titleholder of “San Hong Mi You”, filed the application on 10 November 2009 and was granted the breeder's right on 1 January 2014. The defendant is Runping Commercial Co . Ltd , a supermarket founded in 2008.
On 5 January 2018, the plaintiff found that the defendant had sold “San Hong Mi You” fruits and provided related invoices, photos and videos as evidence. Then, the plaintiff sued the defendant in Guangzhou intellectual property Court for infringement of his breeder’s right, claiming 500,000 yuan and bearing related expenses. In the lawsuit, the defendant offered evidence that the “San Hong Mi You” fruits was purchased from Sennan Company.
The first instance
The court of first instance thought that whether the sued fruit of “San Hong Mi You” is the propagating material is the key to this case, and identified the following fact:
(i)According to the application document, the“San Hong Mi You”is propagated through grafting of branches of bud mutation, not through cell tissue of the fruit.
(ii) The seed of the “San Hong Mi You” fruit has been degraded and can’t be used as propagating material in agricultural production.
(iii) There is no evidence that the fruit of the alleged infringement came from the propagating material of the protected variety, and the defendant sold the fruit as propagating material.
Then, the court held that the alleged fruit was not the propagating material of pomelo, and the defendant's sale of fruit did not constitute an infringement of the breeder’s right, then rejected the plaintiff's claim.
The plaintiff appealed to the Intellectual Property Court of the Supreme People‘s Court of China against the judgment of first instance.
The second instance
The court of second instance confirmed those facts identified by the court of first instance, and invited Professor Cao Li, an expert assistant, to express his views on whether the fruit of “ San Hong Mi You” was the propagating material.
Professor Cao thought that pomelo was usually reproduced asexually by seedlings, and seeds in its fruit were usually degraded and difficult to reproduce. In practice, there were a few farmers sold seedlings planted with degraded seeds. If the cell of the fruit was used to cultivate seedlings, it required a highly technical laboratory and a cost of 300,000 to 500,000 yuan.
The following three issues relating to propagating materials were discussed in detail in the second instance judgment
1.Whether the fruit is the propagating material of the pomelo?
Despite the Seed Law explicates that the term “seeds” as mentioned in this Law refers to the planting or reproduction materials of crops and trees, including grains, fruits, roots, stems, seedlings, buds, leaves, flowers, etc, it does not specify which part of the plant are the propagating material of the particular variety. The court put forward three requirements:
（i）it is alive;
（ii）it has the ability to reproduce, and
(iii)the new individuals propagated have the same characteristic as the protected variety。
In this case, the seed and cell of pomelo fruit do not have the ability to reproduce the protected variety (the fruit skin is dark red, the white skin is pink, and the flesh is purple) and do not belong to propagating material of the protected variety.
2. How to identify those plant parts that can be used both as propagating materials and harvested materials as propagating materials?
If the part of the plant, which can be both propagating material and harvested material, can be identified as propagating material in the tort dispute, the court shall examine the intention of selling the plant material (to sell as propagating material or as harvested material) , and the intention of using the plant material( to consume or to reproduce the protected variety).
If the alleged infringer sells these plant materials as propagating materials or are used to propagate the protected variety, the sales or the utilization will constitute an infringement of the breeder’s right.
3. How to understand the relationship between the scope of propagating material controlled by breeder’s right and breeding method recorded in application documents?
Although the appellant stated in the application that the protected varieties was cultivated by grafting, the breeder’s right did not only control the propagating material used for grafting, but also other material can be used as the propagating material. With the development of technology, if the fruit of pomelo can be used to reproduce the protected variety, the fruit of pomelo should also be controlled by breeder’s right. All parts of plant can be used as propagating material are “propagating material”in the mean of the breeder’s right.
Conclusion of the case
Unless otherwise provided by laws and regulations, the court considers any act of planting the propagating material of the protected variety without the permission of the breeder as reproducing the protected variety that infringes the breeder’s right.
The court of second instance dismissed the appeal and upheld the first sentence, held that the alleged fruit is not the propagating material of the pomelo. The defendant's sale of fruit does not constitute an infringement of the breeder’s right.
Discussion and Suggestion
Question: How to exercise breeder’s right in relation to the harvested material?
If the holder of PVR can claim the right to the harvested material of the protected varieties, obtained through the unauthorized use of propagating materials of protected varieties, it will contribute to strengthen the protection of breeder’s right, reduce holder’s burden of proof, and improve the efficiency of safeguarding right. The case of “San Hong Mi You” in China is an example of the need to incorporate relevant acts in respect of harvested material into the scope of the breeder’s right.
The provision under Article 14(2) of the 1991 Act means that breeders can only exercise their rights in relation to the harvested material if they have not had a “reasonable opportunity” to exercise their rights in relation to the propagating material. The sentence is come from paragraph 12 of UPOV/EXN/HRV/1.
The above expression means that, when breeders exercise their rights in relation to the harvested material, they should prove that the alleged harvested material are obtained through the unauthorized use of propagating material and they have not reasonable opportunity to exercise their rights in relation to the propagating material.
As we know, it is difficult for the breeder to prove that the claimed harvested material obtained through the unauthorized use of propagating material, and it is easy for the seller of the harvested material to prove that his harvested material obtained through the authorized use of propagating material.
If Members implement the provision under Article 14(2) of the 1991 Act, their related laws should regulate the burden of proof of the breeders and the seller in an appropriate manner. For example, if the breeder proves that the related harvested material belongs to harvested material of the protected variety, the seller should prove that the harvested material is made by the authorized propagating material. If the seller cannot prove or is unwilling to provide related evidences, then the related behavior involving the harvested material will constitute an infringement of the breeder’s right and shall bear the tort liability.
Of course, it needs to discuss that whether the above understanding is fully consistent with the article 14(2) of the 1991 Act.According to the literal meaning of the article 14(2) of the 1991 act and the article 1 of UPOV/EXN/HRV/1, the relevant burden of proof seems to be borne by the breeder. This interpretation is actually not conducive to the exercise of the breeder’s right. How to understand the article 14(2) of the 1991 Act? We must rethink that why the 1991 Act extends the breeder’s rights to acts in respect of harvested materials.The article 5(1), the 2nd paragraph, of 1978 Act provides, “Vegetative propagating material shall be deemed to include whole plants. The right of the breeder shall extend to ornamental plants or parts thereof normally marketed for purposes other than propagation when they are used commercially as propagating material in the production of ornamental plants or cut flowers”.This clause integrated some harvested materials of some plants into the scope of propagating materials, considering that these harvested materials can potentially be used for propagating purposes.
However, the intention of the 1991 Act extending the breeder’s rights to acts in respect of harvested materials is different from the above provision of the 1978 Act. The true intention of the 1991 act's is to facilitate the exercise of the breeders' right, to ensure that breeders can exercise their rights over the propagating material, to the harvested material, or to the product made directly from the harvested material of the protected variety, as long as the principle of exhaustion of the breeder’s right is met. The explanation that harvested material in the article 3 of UPOV/EXN/HRV/1 conforms to the meaning of the 1978 Act, not the 1991 Act, should be revised.
Suggestion
Therefore, I make the following four proposals.
1. The revised text of UPOV/EXN/HRV/1 should clearly provide that the breeder may exercise the breeder’s right to the propagating material or the harvested material (or to the product made directly from the harvested material of the protected variety) according to the principle of exhaustion of the breeder’s right.
2. The revised text of UPOV/EXN/HRV/1 may give examples of how to allocate burden of proof when the breeder exercises the breeder’s right over the harvested material. This rule of evidence is the same as that of the breeder exercises the right to the propagating material.
3.The revised text of UPOV/EXN/HRV/1 may give some advices to sellers of harvested materials (or products made directly from harvested materials) of the protected variety. They shall review that whether or not harvested material they sold have been obtained though the unauthorized use of propagating material. If necessary, they may mark the variety denomination of the variety used to produce harvested material.
4.If possible, the revision of the 1991 Act could be initiated at some point in the future, in order to better respond to the challenges of the development of breeding techniques, changes in agricultural cultivation and trade patterns and the development of patent systems. At least, the literal expression of the article 14 of the 1991 Act should be revised.
The above represents are only personal views。
If any question, welcome to continue the discussion.
My E-mail: lijudan@cass.org.cn
Thank you for your attention!
Seminar on the breeder’s right in relation to harvested material (UPOV/SEM/GE/21)
May 27, 2021 (Geneva, Switzerland)
https://www.upov.int/meetings/en/details.jsp?meeting_id=63048
