Did you know?

A new judicial interpretation issued by China’s Supreme Court took effect on 7 July 2021. The interpretation clarifies the application of the law in disputes over the infringement of plant variety rights (PVRs).

Why does this matter to you?

China’s PVR legislation is still at a relatively preliminary stage but, according to The World Intellectual Property Indicators 2020 report published by WIPO, China accounts for one-third of plant variety applications that were filed worldwide in 2019, so it should come as no surprise that China is focused on upgrading its PVR protection. 

The interpretation is intended to expand the scope of protection for PVRs in China, improve the speed, effectiveness and consistency of judicial protection, and to make it easier for PVR holders to establish infringement and damage. Key provisions include:

• Broadening the concept of “propagating material” in line with the findings of the landmark PVR infringement Pomelo case. The definition of “propagating material” is that it must be living and have the ability to reproduce a plant that has the same features and characteristics as the protected variety. 

• Clarifying that the act of planting propagating material may constitute an infringing act. This is a contentious issue in other jurisdictions too.

• Providing that expressing an intention to sell through advertising and exhibiting propagating material may constitute an infringing act.

• Contributory infringement for those who knowingly provide services to infringers including acquisition, storage, transportation, processing and provision of certification materials.

• Making it easier for PVR owners to establish infringement by shifting the burden of proof from the PVR owner to the infringer in certain circumstances including where:

• the infringer claims that the alleged infringing material is harvested material for consumption rather than for production or reproduction; or
• the alleged infringing material uses the same name as a registered variety, it is presumed that the propagating material belongs to that variety, unless the infringer can produce evidence to the contrary.

• The alleged infringer is obliged to provide relevant account books and materials relating to the infringement and preserve evidence. If the infringer fails to provide such information, gives false accounting, or destroys evidence, or hinders establishing proof of infringement, then the court may calculate compensation based on the PVR owner’s claims and evidence.

• The granting of preliminary injunctions to restrain infringement and even the destruction of infringing material to prevent proliferation and reproduction.

• Under the existing law, punitive damages may be imposed in cases of “serious infringement”. The interpretation sets out the relevant circumstances when determining the seriousness of the infringement including repeat offenders, engaging in PVR infringement as a business, forging PVR certificates, selling authorised varieties without labels or marks and refusing to divulge information relating to the production, reproduction, sale and storage of alleged infringing products.

• Allowing the use of industry-specific methods to determine the identity of the authorised variety and the alleged infringing variety in the absence of genetic finger-printing or other molecular marker detection methods. This confirms that quicker and easier DNA tests will be accepted even though they are less accurate than the DUS test, although in the event of any inconsistency between the test results, the DUS test result shall prevail. 
  
  

The interpretation also addresses the issue of the “farmers’ exemption” under the current law which allows farmers to propagate protected plant varieties for their own use without seeking permission of paying royalties to the PVR holder. The interpretation provides that the exemption only applies to reproduction by farmers on their own land. There is some concern that the interpretation does not specifically exclude professional farmers’ cooperatives, rural collectives or larger family farms, but it does provide that when considering whether conduct outside the specified circumstances can claim the exemption, the court will need to look at all factors including the infringer’s purpose, the scale of the operation and whether or not a profit has been made.

The development of new plant varieties is essential to achieving food security and agricultural sustainability. However, breeding new varieties requires a substantial investment of skill, labour, material resources, money and time, which must be protected. This interpretation, and recent cases including the Supreme Court’s decision in the Pomelo case and the eagerly awaited revision to the Regulations for the Protection of New Varieties of Plants, are an indication that China is making important progress in this area.