Registration system for new varieties of plants


The positioning of the breeder’s rights
Breeder’s rights are a type of intellectual property rights, similarly with patent rights and trademark rights.
The law which is the basis of this is the Seeds and Seedlings Law, and the jurisdiction is under the Ministry of Agriculture, Forestry and Fisheries of Japan (Agricultural Production Bureau, Plant Variety Protection and Seed Division)

Detailed examples of infringement in breeder’s rights

[Hinomidori (rush)]
Summary of case
Kumamoto prefecture, the person entitled to the breeder’s rights of rush “Hinomidori”, filed a request on December 2, 2003 to the Nagasaki customs for injunction of tatami matting, since as a result of DNA tests, there was a possibility that the same variety is grown in China without approval, and tatami matting using this variety could be imported.
March 2005, Nagasaki customs accused a tatami matting manufacturing and sales company in an import inspection of a marine container arriving from China, trying to smuggle approximately 9 tons of “Hinomidori” rush, produced in China.

[Benishuho (cherries)]
Summary of case
The seedling of Benishuho, a cherry in which Yamagata prefecture holds the breeder’s right, was unlawfully taken out overseas by an Australian citizen residing in Tasmania, producing and selling fruits. Thus, Yamagata prefecture lodged a criminal complaint against the exporters.

[ Hinomidori (rush) ]	[ Benishuho (cherries) ]

Recent breeder’s rights infringement (broadcast) cases

Court case regarding king trumpet mushrooms

The intellectual property high court dismissed the appeal of the dispute above regarding king trumpet mushrooms on December 21, 2006 (Heisei 18 (NE) 10059).

The appellor is currently in the process of a petition for acceptance of final appeal against the decision.
















(1) Protected plants
Protected are all the cultivated plants (seed plants, ferns, mosses, and multicellular algae) and mushrooms designated by government decree. A breeder of a new plant variety in these and the assignee of the new plant variety may file an application for variety protection.

○Mushrooms designated by government decree (32 varieties as of September 8, 2004)
Cloud ear fungus, Indian oyster mushroom, enokitake, king trumpet mushroom, abalone mushroom, Jew's ear fungus, long net stinkhorn, brick cap, kuroawabitake (Pleurotus abalonus), basidiomycete fungus, shiitake mushroom, shirotamogitake (Hypsizygus ulmayium), tuberous polypore, branched oyster mushroom, white mushroom, giant polypore, nameko (Pholiota nameko), nioushimeji (Tricholoma giganteum Massee), numerisugitake (Pholiota adiposa), hatakeshimeji (Lyophyllum decastes), cauliflower mushroom, himematsutake (Agaricus subrufescens), oyster mushroom, bunashimeji (Hypsizygus tessellatus), bunaharitake (Mycoleptodonoides aitchisonii), honshimeji (Lyophyllum shimeji), sheep's head, lingzhi, olive oysterling, blewits, poplar fieldcap, and bearded tooth

(2) Requirements for a registration of variety
1. Distinctiveness
There is clear distinctiveness between an existing variety and a new variety by important characteristics: shape, quality, disease resistance, etc.

2. Uniformity
A characteristic of the new variety is similar enough between individuals in one generation (Seeds of the new variety grow into the same individuals).

3. Stability
Characteristics of the new variety are stable after breeding (Same individuals grow over generations).

4. Novelty
Seeds, seedlings, and harvestry of the new variety in an application are not assigned to anybody before the day one year before an application date.

5. Suitability of denomination
A name of the new variety is not mistakable for that of an existing variety or an existing trademark.

(3) Provisional protection
Although it normally takes an examination period of several years from an application to a registration of variety, an applicant is given prescribed protection (provisional protection) for the examination period.

Period of provisional protection: between an application publication to a registration of variety
Provisional protection: After the registration of variety, an applicant can demand compensation which is equivalent to a royalty from a person who produced or assigned seeds, seedlings, etc. of a variety of the application in the examination period. However, in principle, this is possible only for a case where there was a written warning etc. beforehand in which details of the variety of the application were described.

(4) Examination of the Characteristics, etc.
After publication of the application, the examination is conducted by the following method with regard to whether the conditions for variety registration are satisfied or not, and it is strictly judged whether the variety may be registered or not.
1) Examination of documents
2) Growing Test, On-site Inspection by government officials, or Documentary Examination
3) Submission of documents and data necessary for examination






(5) Examination of the Denomination of Variety
When the denomination of the applied variety is not appropriate, the application is not rejected immediately, but the application is ordered to select another denomination for the variety.
Even a publicly announced denomination, where it is found inappropriate as a result of consulting the trademark register after publication or examination of characteristics, the applicant will be ordered to change the denomination just before variety registration.
The applicant cannot voluntarily change the denomination without the order to change.

5. After Registration
When the variety is registered, the denomination of the variety, the characteristics of the plant, the name and domicile of the holder of the breeder’s right, the duration of the breeder’s right, etc. are registered in the Register of Plant Varieties and, furthermore, publicly announced in the official gazette.

(1) Breeder’s Right
The breeder’s right is granted by registration of the variety.
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.

(2) Duration of Breeder’s Right
The duration of a breeder’s right is 25 or 30 years.
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.

Genus or Species: Perennial plants (woody plants such as fruit trees, forest trees, ornamental trees, etc.)
Duration of Breeder’s Right: 30 years

Genus or Species: Other plants
Duration of Breeder’s Right: 25 years

(3) Exploitation of the Registered Variety
1) The holder of a breeder’s right can exclusively exploit the registered variety etc. (production and sales of seeds and seedlings, etc.).

Seed company A(the holder of a breeder’s right)

Exclusive production and sales of seeds and seedlings ＝＝＝＝＝＝＝＝＝＝＞ ＜－－－－－－－－－－ Profit from sales

Persons who exploit a registered variety (farmers or consumers)

2) The holder of a breeder’s right may transfer the right as property and grant a right of pledge of it.

Farmer (Breeder) B(the holder of a breeder’s right)

Transfer of the breeder’s right ＝＝＝＝＝＞ ＜－－－－－ Payment of consideration

Seed company C

Production and sales of sees and seedlings ＝＝＝＝＞ ＜－－－－ Profits from sales

Persons who exploit a registered variety (farmers or consumers)

3) The holder of a breeder’s right may also collect a royalty by authorizing other persons to exploit seeds and seedlings, etc. of the registered variety etc.

Non-exclusive license
A person who is granted a non-exclusive license by the holder of a breeder’s right may exploit the registered variety etc. to the extent specified in the contract.

Seed Company D (the holder of a breeder’s right)

Non-exclusive license ＝＝＝＝＞ ＜－－－－ Payment of a royalty

Agricultural Cooperative E Agricultural Cooperative F Company G

Sales ＝＝＞ ＜－－ Farmers

Profits from sales

Exclusive license
A person who is granted an exclusive license may exclusively exploit the registered variety etc. to the extent specified in the contract.
Even the holder of the breeder’s right may not exploit the registered variety to the extent that the exclusive exploitation right is granted.
However, the right shall not take effect, unless it is registered in the Register of Plant Varieties.

Farmer (Breeder) H (the holder of a breeder’s right)

Exclusive license ＝＝＝＞ ＜－－－ Payment of a royalty

Seed Company I

Sales ＝＝＝＞ ＜－－－ Profits from sales

Farmers

6. Exceptions To Breeder’s Right
The breeder’s right does not protect against following conducts.
(1). Use of A Variety for The Purpose of Breeding A New Variety, of Testing, or of Researching
1. Breeding seeds and seedlings of registered varieties for the purpose of breeding new varieties.
2. Breeding seeds and seedlings of registered varieties for the purpose of researching the characteristics of the registered varieties in order to confirm that those characteristics are as registered.
The above are exceptions to the breeder’s right.

(2). In-House Breeding By A Farmer That Is Authorized By A Decree
In agriculture, in-house breeding is, as the diagram below illustrates, that farmers (individual farmers and agricultural production corporations) gain a harvest by breeding the seeds and seedlings of the registered varieties, and further use the harvest as seeds and seedlings for their own agronomy.
In principle, the breeder’s right does not protect against the in-house breeding by farmers; however, if a contract restricting it is closed or if registered varieties are vegetation propagation plants in the following table, the breeder’s right does protect against the in-house breeding (farmers have to acquire approval for in-house multiplication.).



Q. Is in-house breeding free from being subject to the breeder’s right for all plants?

A.
1. Breeding seeds and seedlings corresponds to “producing seeds and seedlings”; therefore, in principle, approval from a person(s) entitled to the breeder’s right is required.
However, with consideration for conventional agricultural practices, certain in-house breeding by farmers is not required to be approved by breeders (the second and the third paragraph of Article 21).

2. In-house breeding has to meet following requirements in order to be applied for the special exception above.
 In-house breeding has to be done by individual framers or agricultural production corporations.
 Plants bred through in-house breeding are not vegetation propagation plants designated by decrees.
 Seeds and seedlings to be bred for a first time are officially assigned by the person(s) entitled to the breeder’s right. (* If in-house breeding is started on seeds and seedlings bred by neighboring farmers, it cannot be applied for the special exception.)


3. If requirements of the section 2 are not met or if in-house breeding is restricted by individual civil contract, approval by the person(s) entitled to the breeder’s right, in principle, is required for the use of the seeds and seedlings of the registered varieties.
Note that plants, in-house breeding of which is commonly restricted by contracts, or plants, restricting in-house breeding of which does not cause any problems, are preferentially designated by the decrees. Currently, 23 kinds of vegetation propagation plants are designated by the decrees. Remember that from August 1, 2007, other 58 kinds of plants have been additionally designated and 81 kinds have been restricted from being bred through in-house breeding.

Plants Designated By Department Decrees (23 varieties)
Alstoemenia, Odontoglossum, Oncidium, Gypsophila Elegans, Cattleya, Gerbera, Kalanchoe, Clematis, Zygocactus, Cymbidium, Saintpaulia, Tulipa, Dendrobium, Dianthus, Petunia, Pelargonium, Impatiens, Iris, Carnation, Hydrangea, Rosa, Poinsettia, Shiitake mushroom

→58 Varieties of Plants Additionally Designated From August 1, 2007
Trifolia, Angelica (except Angelica acutiloba), Smallantus, Horseradish, Carica, Matubusa (Schisandra repanda), Malpighia, Agastache, Angelonia, Isotoma, Iwadaresō (Lippia nodiflora), Warlenberg、Aeonium, Exacum, Evolvulus, Eryngium, Chlorophytum, Callisia, Graptopetalum, Scaevola, Scoparia, Senecio (except Cineraria), Solidago, Solidaster, Scutellaria, Oplismenus, Diascia, Diffenbachia, Disa, Passiflora, Nolana, Dionaea, Bidens, Pratia, Plectranthus, Halleborus, Iresine, Sedum, Chamaemelum, Crossbreeding of Rakkyo (Allium chinense) and Kiito-Rakkyo (Allium virgunculae), Crossbreeding of Rakkyo (Allium chinense) and Yama-Rakkyo (Allium thunbergii)、Adenium, Styrax, Ervatamia, Heliotropium, Laurus, Symphoricarpos, Serruria, Cuphea, Parthenocissus, Erythrina, Dizygotheca, Duranta, Pachira, Eurya, Luculia, Prunus tomentosa, Cauliflower mushroom, Lyophyllum shimeji

Application Documents and The Like
 Application form
 Description
 Characteristic table
 Photograph (a digital photograph is not acceptable)
 Seed or Strain: 1,000 grains of mature seeds which are sufficiently prepared, absolutely healthy, and perfect in shape; or 5 strains cultured in test-tubes (18 ´ 180mm)

Cases of Vegetation Propagation Plants
 For vegetation propagation plants, seeds and the like cannot be submitted. Therefore, in this case, nothing has to be submitted.
 Since examination officers conduct a field investigation, it is necessary that applied vegetation propagation plants have to be actually bred somewhere in Japan (an address for a breeding place and a nearest station have to be written down in the application form).

Characteristic Table
 Since characteristics to be comprehended vary among plants varieties, a characteristic table changes accordingly.
 For plants that have been registered so far, forms and methods for evaluating characteristic have been developed.
 For plants that have never been applied, an applicant(s) determines characteristic evaluation factors of the characteristic table and methods for evaluating characteristics, and develops the characteristic table by following important characteristics designated by the notification from Ministry of Agriculture, Forestry, and Fisheries of Japan and referring to criteria for examination of comparable plants.

Other Application Documents
Certificate of Assignment
 A certificate of assignment from a breeder to an applicant is required. If the breeder places a seal, a certificate of seal impression has to be attached (the breeder usually sign the certificate of assignment to overleap the work to acquire the certificate of seal impression).
 A breeder’s address on the certificate of assignment has to be an address on the certificate of seal impression (address on a certificate of residence). Thus, the address cannot be “a college premise” as in the case of an application form for patent application.

A Relation Between A Patent and A Registration of Variety (1)
 Requirements for registration (patent) is different
→ protections from both a patent and a registration of variety are available (in the United States and South Korea as well)
→ a registration variety has a longer period of continuation

 Judgment of identity is made possible by referring to DNA.
→ a response to infringement is relatively easy.

A Relation Between A Patent and A Registration of Variety (2)
 There may be a case that whether novel characteristics are “important characteristics” or not is discussed in an annually held council.
→ it takes longer than usual to register.
 Un-assignment is required instead of novelty.
→ there may be a case that application for a registration of variety is possible despite a lack of novelty in a patent.

Information Required at A Time of Request
 A variety name and a scientific name of a plant
 Important characteristics (characteristics of a new variety)
 A summary of breeding methods
 Vegetative propagation or seed propagation
 Existence or nonexistence of experimental data