*AI-generated translation, for reference only.

[Keywords]

Administrative; Invalidation of New Plant Variety Right; Novelty; Sale; Entrusted Seed Production and Repurchase

[Case Facts]

 [REDACTED] Seed Company, on the ground that the maize plant new variety named "Qiangshuo 68"—whose variety right holder involved in the case is Yi [REDACTED]—does not possess novelty, requested the Plant Variety Reexamination Board of the Ministry of Agriculture and Rural Affairs (hereinafter referred to as the Plant Variety Reexamination Board) to declare the variety right of "Qiangshuo 68" invalid. The Plant Variety Reexamination Board rendered the 2020 No. 25 Variety Right Invalidation Examination Decision (hereinafter referred to as the Contested Decision), upholding the validity of the variety right involved in the case. Dissatisfied, [REDACTED] Seed Company filed a lawsuit with the Beijing Intellectual Property Court, requesting revocation of the Contested Decision and an order directing the Plant Variety Reexamination Board to make a new decision.

The Beijing Intellectual Property Court, on August 17, 2022, rendered Administrative Judgment (2021) Jing 73 Xing Chu No. 3144, dismissing the claims of [REDACTED] Seed Company. [REDACTED] Seed Company filed an appeal, and the Supreme People's Court, on March 21, 2023, rendered (2022) SPC IP Admin. Final 809: the appeal is dismissed, and the original judgment is upheld.

[Judge's Opinion]

The legally effective judgment of the Court holds that: in determining whether a variety for which a new plant variety right is applied possesses novelty, the focus should be on examining whether, before the filing date, the propagating material of the plant variety was, by the breeder himself or with the breeder's permission, sold within the territory of China for more than 1 year, sold outside the territory of China for more than 6 years for vines and woody plants, or sold for more than 4 years for other plants. The core of the dispute in this case lies in determining whether Yi [REDACTED] sold the propagating material of "Qiangshuo 68" within the territory of China before December 9, 2008—that is, one year before December 9, 2009, the date on which the new plant variety right for "Qiangshuo 68" was applied for. An approved variety obtains an approval certificate through administrative procedures, which is different from obtaining a new plant variety right as a civil right; passing variety approval does not mean that the applicant obtains an exclusive civil right. The provision in Article 7, Item 8 of the Measures for the Administration of Production and Operation Licenses for Crop Seeds concerning "where the variety is an authorized variety, an applicant for a seed production license shall also provide the examining authority with the variety right holder's written consent or a variety transfer contract"—therein, the "authorized variety" should refer to a variety that has obtained a new plant variety right. The variety right for "Qiangshuo 68" was granted on March 1, 2014; when Gansu [REDACTED] Company, on June 24, 2008, added "Qiangshuo 68" by amendment to its original seed production license, "Qiangshuo 68" was not yet an authorized variety and obviously did not fall within the circumstance, provided in the aforementioned Measures for the Administration of Production and Operation Licenses for Crop Seeds, in which the variety right holder's written consent must be submitted when applying for a seed production license. [REDACTED] Seed Company, merely on the ground that Gansu [REDACTED] Company added "Qiangshuo 68" by amendment to its original seed production license, asserted that Yi [REDACTED] and Gansu [REDACTED] Company must have signed a production agreement; this still lacks valid evidence to corroborate it and is insufficient to prove the fact that Yi [REDACTED] sold the propagating material of "Qiangshuo 68". Whether a sale occurred is an important fact in determining whether the applied-for variety possesses novelty. Pursuant to Article 14 of the Regulations on the Protection of New Varieties of Plants of the People's Republic of China (hereinafter referred to as the Regulations on the Protection of New Varieties of Plants), a sale that causes a variety for which protection of a new plant variety right is sought to lose novelty refers to an act in which the actor, for the purpose of a transaction, delivers the propagating material of the variety to another person for disposal and relinquishes its own right to dispose of that propagating material. Where a breeder, for the purpose of entrusting another person to produce seeds, delivers the propagating material of the applied-for variety and at the same time agrees that the produced propagating material of the variety shall be returned to the breeder, because the breeder substantially retains the right to dispose of the propagating material of the variety, this—unless otherwise provided by law—does not cause the applied-for variety to lose novelty. According to the contents recorded in the Certification Letter, the "Qiangshuo 68" seeds produced by Zhangye [REDACTED] Company were to be delivered to Yi [REDACTED]; Yi [REDACTED] entrusted that company to produce the seeds and was obligated to pay the seed-production fee to repurchase the "Qiangshuo 68" seeds produced by Zhangye [REDACTED] Company, and the two parties' expression of intent regarding entrusted seed production and repurchase was clear. [REDACTED] Seed Company did not present contrary evidence to overturn the fact of such entrusted seed production and repurchase. Although Zhangye [REDACTED] Company held and used the "Qiangshuo 68" propagating material for a certain period, it had no right to dispose of the "Qiangshuo 68" propagating material or to carry out other acts inconsistent with the entrusted production contract. Yi [REDACTED], as the entrusting party, did not relinquish the right to dispose of the propagating material of the applied-for variety. Therefore, the act of Yi [REDACTED] entrusting Zhangye [REDACTED] Company to produce "Qiangshuo 68" and repurchasing it does not constitute an act of selling the propagating material of "Qiangshuo 68". In summary, the existing evidence submitted by [REDACTED] Seed Company in this case is insufficient to prove that "Qiangshuo 68" has lost novelty.

[Judgment Digest]

Pursuant to Article 14 of the Regulations on the Protection of New Varieties of Plants, a sale that causes a variety for which protection of a new plant variety right is sought to lose novelty refers to an act in which the actor, for the purpose of a transaction, delivers the propagating material of the variety to another person for disposal and relinquishes its own right to dispose of that propagating material. Where a breeder, for the purpose of entrusting another person to produce seeds, delivers the propagating material of the applied-for variety and at the same time agrees that the produced propagating material of the variety shall be returned to the breeder, because the breeder substantially retains the right to dispose of the propagating material of the variety, such act does not constitute an act of selling the propagating material of the variety and, unless otherwise provided by law, does not cause the applied-for variety to lose novelty.

[Related Index]

Articles 14, 21, 27, 28, and 37 of the Regulations on the Protection of New Varieties of Plants of the People's Republic of China (this case applies Articles 14, 21, 27, 28, and 37 of the Regulations on the Protection of New Varieties of Plants of the People's Republic of China, which took effect on October 1, 1997)

First instance: Beijing Intellectual Property Court, Administrative Judgment (2021) Jing 73 Xing Chu No. 3144 (August 17, 2022)

Second instance: Supreme People's Court, (2022) SPC IP Admin. Final 809 (March 21, 2023)