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Defense against abuse of right in a lawsuit over infringement in breeder’s right

July 8, 2008
HARAKENZO WORLD PATENT&TRADEMARK
Patent attorney Maiko Murahashi

1. Introduction
Intellectual Property High Court (IPHC) made such a decision, on December 21, 2006, that suspension appealed on ground of infringement in breeder’s right based on Seeds and Seedlings Law corresponds to abuse of right, and therefore cannot be accepted, since it is clear that its registration of variety should be cancelled ((ne) No. 10059, 2006, Case of appealing for suspension of seedling production and right transfer, IPHC 3rd Section, chief judge Hisao Sato; original instance (wa) No. 358, 2002, Nagano District Court). This judgment draws attention as such a case that Patent Law Section 104(3) (defense against abuse of right) which has been established due to Supreme Court decision on Kilby Case was applied to Seeds and Seedlings Law.
The aforementioned case is described below. Further, we would like to provide an explanation regarding breeder’s right based on Seeds and Seedlings Law, defect in registration of variety, and the relation between the defect in registration of plant variety and abuse of right.

2. Original instance: Nagano District Court decision, May 19, 2006 (abstract)
(1) Court decision
When it is clear that there is a ground for invalidation of registration of a variety because of the variety being publicly known, a request for suspension, compensation, and the like based on breeder’s right regarding the variety corresponds to abuse of right, and therefore cannot be accepted, unless in particular circumstances.
(2) Reason
In regard to patent right, when it is recognized that a patent should become invalid by a patent invalidation trial, even though the patent does not actually go through the trial, a right holder cannot execute the right on an adverse party at a lawsuit with regard to infringement in patent right (Patent Law Section 104(3)(i)). This requirement is also applied to utility model right, design right, and trademark right, however, is not applied to a lawsuit over infringement in breeder’s right based on Seeds and Seedlings Law.
Minister of Agriculture, Forestry, and Fisheries gives approval to registration of the variety so that the breeder’s right is granted (Seeds and Seedlings Law Article 19(1)), and also makes the right invalid in case where the ground for invalidation can be found. The registration is premised on a field investigation and a cultivation experiment performed by an expert such as a staff of Ministry of Agriculture, Forestry, and Fisheries and Independent Administrative Legal Entity (Seeds and Seedlings Law Article 15(2)). In view of these, it can be considered that efficacy of the registration is determined uniformly by technical judgments of concerned organizations. Furthermore, it can be considered that the adverse party of the lawsuit over infringement in breeder’s right cannot make a request for invalidation of the registration as a defense.
However, it is possible to determine objectively whether or not the registered variety and a variety to be compared are publicly known. Also, there is no possibility of a division of the determination. Therefore, it is assumed that the adverse party can make a request for invalidation of the registration on ground of the variety being publicly known. That is to say, when it is clear that there is a ground for invalidation of registration of the variety because of the variety being publicly known, a request for suspension, compensation, and the like based on its breeder’s right corresponds to abuse of right, and therefore cannot be accepted, unless in particular circumstances.

3. Appellate instance: Intellectual Property High Court decision, December 21, 2006 (abstract)
(1) Court decision
When it is clear that registration of a variety should be cancelled, even though the registration is not yet cancelled, execution of breeder’s right regarding the variety corresponds to abuse of right, and therefore cannot be allowed.
(2) Reason
In regard to patent right, when it is recognized that a patent should become invalid by a patent invalidation trial, even though the patent does not actually go through the trial, a right holder cannot execute the right on an adverse party at a lawsuit with regard to infringement in patent right (Patent Law Section 104(3)(i)). This requirement is also applied to utility model right, design right, and trademark right, however, is not applied to a lawsuit over infringement in breeder’s right based on Seeds and Seedlings Law. This is because Seeds and Seedlings Law does not provide a unique invalidation trial system, unlike Patent Law. However, when it is clear that registration of the variety is in contravention of Seeds and Seedlings Law and that the registration should be cancelled by Minister of Agriculture, Forestry, and Fisheries, execution of breeder’s right that is granted by such a registration should not be allowed.
With respect to registration of the variety that is in contravention of Seeds and Seedlings Law and is obvious to be cancelled, allowance of a request for suspension of utilization of the variety and for compensation based on breeder’s right regarding the variety provides a owner of the breeder’s right with excessive profits and provides a user of the variety with unreasonable loss. This results in contrary to equity. Moreover, when Minister of Agriculture, Forestry, and Fisheries does not exercise authority to cancel the registration, a defense against execution of the breeder’s right on grounds of the registration not complying with the requirement cannot be allowed unless the lawsuit over infringement in breeder’s right goes through a step of opposition under Administrative Appeal Law or an administrative lawsuit. This is in contrary to a basis of judicial economy.
Therefore, when it is clear that registration of the variety is in contravention of Seeds and Seedlings Law and is to be cancelled, even though the registration is not yet cancelled, execution of breeder’s right regarding the variety corresponds to abuse of right, and therefore should not be allowed.

4. Breeder’s right based on Seeds and Seedlings Law
The breeder’s right is granted by registration of the variety. The registration of the variety is an administrative measure taken by Minister of Agriculture, Forestry, and Fisheries. An applied variety can be registered when complying with the following requirements under Seeds and Seedlings Law.
1) distinctiveness; uniformity; and stability (Article 3(1))
2) non-transfer (Article 4(2))
3) joint application when having a number of breeders (Article 5(3))
4) earlier application having a priority (Article 9(1))
5) the scope of right which can be enjoyed by a foreigner (Article 10)
The holder of the breeder’s right enjoys the exclusive right to exploit, in the course of business, the registered variety, varieties that are not clearly distinguishable from the registered variety in terms of their characteristics, dependent varieties and varieties whose production requires the repeated use of the registered variety (hereinafter collectively referred to as the “registered variety etc.”). The exploitation of the varieties means as follows: (1) acts in respect of seeds and seedlings; (2) acts in respect of harvested materials; and (3) acts in respect of processed products made directly from harvested materials. Therefore, no person other than the holder of the breeder’s right may exploit, in the course of business, the registered variety etc. without the consent of the holder of the breeder’s right.
The duration of a breeder’s right is 25 or 30 years from the registration. However, during this period, the registration may be revoked because of failure to pay the annual registration fee during the designated time limit, or where it is discovered that the variety did not meet the conditions for variety registration, or where the characteristics of the plant are no longer the same as those at the time of registration.

5. Defect in registration of variety
In case where the applied variety is determined to be in contravention to the above requirements 1) through 5) by the examination, a notice of reasons for refusal would be given (Seeds and Seedlings Law Article 17(2)). The application would be rejected when the reasons for refusal could not be overcome even by submission of a written opinion of the applicant (Article 17(1)(i)). Meanwhile, in case where the applied variety is determined to be in contravention to the requirements after the registration, the registration would be cancelled by the authority of Minister of Agriculture, Forestry, and Fisheries (Article 49(1)). Cancellation of the registration would be considered as being effective retroactive to the time of registration (Article 49(4)(i)).
Seeds and Seedlings Law does not provide an invalidation trial system, unlike Patent Law. Alternatively, those who have an objection to the registration are entitled to make a request for the cancellation. When the authority to cancel the registration is not exercised, it is also possible to appeal for the cancellation by making an appeal under Administrative Appeal Law or by filing an administrative lawsuit.
However, Seeds and Seedlings Law lacks a stipulation for restricting the execution of right, such as Patent Law Section 104(3). Therefore, the problem arises from whether or not arguments for pointing out the lack of the requirements for the registration would be accepted as a defense in a lawsuit over infringement in breeder’s right without the cancellation of the registration.

6. Relation between defect in registration of variety and abuse of right
When there is a reason for canceling the registration, it is irrational to make a judgment of infringement in an infringement lawsuit by assuming that the registration of variety is effective unless the cancellation is made by the authority of Minister of Agriculture, Forestry, and Fisheries. Such a case does not differ substantially from a patent infringement case in which an invention has a reason for invalidation. Seeds and Seedlings Law, which includes a system for canceling, but not the invalidation trial system, should not have influence on determining whether or not the defense against abuse of right in the lawsuit over infringement in breeder’s right can be accepted. Each decision in the original instance and the appellate instance of this case indicates that, when it is clear that the registration has a defect, the execution of breeder’s right regarding the variety corresponds to abuse of right, and therefore cannot be allowed.
However, the reason for the cancellation that supports the argument against the abuse of right differs between the original instance and the appellate instance. The decision in the original instance indicates that, since the examination is based on a field investigation and a cultivation experiment performed by experts of the concerned organizations, it is possible to make an argument against the abuse of right when the reason for the cancellation is based on public knowledge of the variety. In other words, according to the decision in the original instance, the argument against the abuse of right cannot be substantially made when there is other reason for the cancellation. On the other hand, the decision in the appellate instance is based on the reason that does not differ from one adopted in Supreme Court decision on Kilby Case for admitting the abuse of right. That is, the decision in the appellate instance indicates that, when it is clear that registration of variety is in contravention of Seeds and Seedlings Law and is to be cancelled, even though the registration is not yet cancelled, execution of breeder’s right regarding the variety corresponds to abuse of right, and therefore should not be allowed. Therefore, according to the decision in the appellate instance, the reason that supports the argument against the abuse of right is not limited to the public knowledge of the variety, and other reason also enables the argument.

7. Conclusion
The appellor of this case is currently in the process of a petition for acceptance of final appeal against the decision. The appellate instance decision may be overturned in future. However, it is assumed that the defense against abuse of right can be made with invocation of Patent Law Section 4(3) even in a lawsuit over infringement in breeder’s right.

8. Cited reference
“INTELLECTUAL PROPERTY MANAGEMENT” (Chizai Kanri) JAPAN INTELLECTUAL PROPERTY ASSOCIATION Vol. 57 No. 9 Page 1521-1525, 2007

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STAFF

DEPUTY DIRECTOR GENERAL Patent&Trademark Attorney
Specially Qualified Attorney For Infringement Litigation
Specialist
Toshiro KURODA
DEPUTY DIRECTOR GENERAL Toshiro KURODA Toshiro KURODA, born in 1975, obtained as MS in Life Science from the University of Tokyo. The targets of his research include Molecular and Cellular Biology, and Genetic Engineering. His specialty covers Life Science, and Biotechnology. He is presently a member of JPAA. Certified in 2005 as Litigation Certified Intellectual Property Attorney.

Intellectual properties, in particular, about inventions related to Life Science are becoming more and more important all over the world as well as in Japan. For that reason, I will offer you the best service about the inventions in the field of Life Science in general. I would appreciate it if you would ask me for any advice on the inventions related to Biotechnology.
Station Manager
Patent&Trademark Attorney / Specially Qualified Attorney For Infringement Litigation
Specialist
Kazuya HASEGAWA
Kazuya HASEGAWA Kazuya HASEGAWA,born in 1969, obtained an MS in industrial chemistry from Hiroshima University. The targets of his research include analysis of Immunology, Fermentation Technology, Enzymatic Technology and Saccharide Chemistry. His specialty covers Allergy, Food, Microorganism, Cosmetics, Enzyme and Saccharide. He is presently a member of JPAA. Certified in 2005 as Litigation Certified Intellectual Property Attorney.

More than anything else, I love to try something new. I will keep trying, so that I can provide satisfactory services to out client, making good use of my know-how obtained through research experience at a business enterprise.

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