By Dr. Shujun YU, YU & WANG PBR Law Service, and Alanna Rennie, Baker McKenzie.
Since 2010, Lawyers Renchun YU and Wanjun WANG from the Hebei Goodhope Law Firm have engaged in a series of royalty claim and infringement cases in relation to asexually propagated PVR protected varieties in China, including the Ulmus Meiren (Beauty Elm) case. In 2015, Dr. Shujun YU (CIOPORA’s first member in China since 2011) also joined the team, founding YU & WANG PBR LAW SERVICE. The firm then initiated a series of lawsuits in relation to the protected Citrus (pomelo) San Hong Pomelo variety. The firm’s legal actions and a more recent case involving a PVR protected strawberry variety have put the Chinese PVR regime to test. Four articles of the recent Supreme People’s Court (SPC) Interpretation, which we explore below, are based directly on the court cases led by the YU & WANG Team.
Picture (private): Breeder CAI (left) of San Hong Pomelo variety and Lawyer YU (right) during an inspection in an orchard.
With the goal to effectively protect PVR and the legitimate interests of title holders, to crack down on infringements, and to promote plant innovation, the Supreme People’s Court of China (SPC) promulgated the Provisions on the Specific Application of Legal Issues in the Trial of Plant Variety Rights Infringement Cases (further, the Judicial Interpretation) on July 5, 2021, coming into effect on July 7, 2021.
For a long time, Plant Variety Rights (PVR) infringements in horticulture have been on the rise. While enforcing PVR requires significant financial and time investments, more often than not the outcomes remain satisfactory. Without a strong legal framework supporting the effective enforcement, there is no incentive for research institutions, enterprises, and individuals to further invest in plant innovation. According to Lawyer YU, the SPC’s Judicial Interpretation aimed at balancing out the existing deficits by broadening the scope of PVR protection, strengthening the right and enhancing the enforcement options for breeders.
Provisions Referencing the Beauty Elm (Meiren) Case
Lawyer YU explains that although harvested and processed material and Essentially Derived Varieties are not yet protected under the current PVR law in China, a comprehensive protection for propagating material may partially make up for it. The updated Judicial Interpretation establishes a broad protection for propagating material, including production and sale, as well any services leading to infringements, such as purchasing, storing, transporting, processing for the purpose of reproduction, providing relevant certification material and other actions that may assist third parties in committing PVR infringements. This covers the entire supply chain!
It is understood that four articles in the Judicial Interpretation, including Article 3, Article 5, Article 6, and Article 9, directly arise from the principles and practices laid down in the judgments of cases handled by YU & WANG PBR LAW SERVICE. Lawyer YU also participated and contributed to the Study & Discussion Symposium on the Judicial Interpretation of PVR organised by the SPC, and the Experts Symposium on related topics organised by the National Forestry and Grasslands Administration (NFGA).
Lawyer YU explains that Article 3 and Article 5 of the Judicial Interpretation may be very useful for PVR enforcement in horticulture, confirming the broad scope of protection, from seedling to the end-product.
Article 3 of the Judicial Interpretation clarifies that to be deemed propagating material (defined to include roots, shoots, leaves, flowers, fruit, seeds, and tissue, organ, cells, etc.) of a protected variety, the material must have propagating ability and be able to produce new plant true-to-type. Further, the Judicial Interpretation clarifies that what constitutes propagating material shall not be limited to the propagating material obtained by the propagation methods described in the PVR application.
Article 5 provides that the SPC can deem the growing of propagating material of a protected variety to be a protected act of production or propagation, hence, propagating material, depending on the case circumstances.
The Judicial Interpretation also provides for:
standardization of calculation of the punitive damages;
preliminary injunction procedure and the protective destruction measures;
possibility to transfer the burden of proof to the alleged infringer under certain circumstances;
standardization of verification processes and clarification of the procedural defence mechanisms.
All these measures are aimed at bringing balance to the China PVR system, providing direct benefits to plant breeders while safeguarding the interests of Nongmin 农民 (directly translated into English as “peasants”, not broadly capturing all farmers).
Provisions Referencing the Citrus (Pomelo) San Hong Pomelo Case
Article 6 and Article 9 of the Judicial Interpretation are aimed at facilitation of PVR enforcement by transferring the burden of proof and responsibility for the evidence collection to defendants in some cases.
Article 6 provides: “If the plaintiff proves that the registered variety denomination of a PVR protected variety was used in connection with alleged infringing material, the People’s Court can presume that the alleged infringing material belongs to that of the PVR variety. If there is evidence to prove that the alleged infringing material does not belong to the PVR variety, the People’s Court may determine that the alleged infringer has engaged in the act of counterfeiting, and shall determine the civil liability by reference to the relevant provisions on trademark counterfeiting.”
Article 9 provides “If the alleged infringing material can be regarded as both harvested material and propagating material, and the alleged infringer claims that the material is harvested material for use in consumption and not for use in production or propagation, then the alleged infringers shall bear the burden of proving this.”
Dr. Shujun YU points out that, in the past 20 years, the People’s Courts at the intermediate, high and the Supreme Court levels have mainly dealt with cases in seed varieties, i.e. agricultural crops, paying less attention to asexually propagated horticultural crops. This mostly due to the lack of cases initiated by breeders of horticultural varieties. However, in such varieties, the promulgation of the updated Judicial Interpretation by SPC may just serve as a turning point. “A significant development for the fruit and ornamental breeders,” says Dr. Shujun YU.
About the authors:
Dr Shujun YU, Beijing Hengda Agforest PBR Attorney Co, YU & WANG PBR LAW SERVICES, China:
Having been one of the first PVP specialists at MARA, China’s Ministry of Agriculture and Rural Affairs, as China joined UPOV as its 39th member in 1999, Dr. Shujun YU – CIOPORA’s first member in China since 2011 - has a strong background in plant IP and horticulture. Later on, Dr. YU founded his own consultancy, Beijing Hengda Agforest PBR Attorney Co., assisting breeders with PVR registrations and related matters in China. He is now also a member of the YU & WANG PBR LAW SERVICES team, a law firm specializing in PVR enforcement in China.
Alanna Rennie, Baker McKenzie Sydney:
Alanna Rennie is an Associate in Baker McKenzie's Sydney office, where she practices Mergers and Acquisitions and plant Intellectual Property. Alanna’s Master’s thesis was on Plant Breeder's Rights in China, where she engaged closely with China's MARA and NFGA, international plant breeders active in or looking to enter the Chinese market, and other stakeholders. Alanna worked with CIOPORA in 2018, where she assisted the association with its activities in China.