South Korea: Patent and plant varieties can be protected

In Korea, plants can be protected by both Patent Law and Plant Variety Protection Law. Activities to seek the protection of the IP rights pertaining to plants have been growing, particularly with the development of genetic engineering technology as well as with the growth of the agriculture industry. This growing interest is evidenced by the significant increase in the number of applications, not only for patents, but also for plant variety rights. For example, as of December 2015, more than 8,000 applications for plant variety registrations were filed in Korea which makes Korea the seventh most active filer of plant variety rights among the UPOV member countries.

Korea's patent policy is supportive of plant patenting. In Korea, there is practically no restriction in terms of patent eligibility of plant-related inventions. For example, unlike Article 53 (b) of the EPC, Korea does not have a statutory bar that excludes patentability of certain types of inventions (such as "plant or animal varieties or essentially biological processes for the production of plants or animals"). Korea has a general exclusion provision that is similar to Article 53 (a) of the EPC, which excludes the patentability of inventions that are contrary to the public order or morality (Article 32 of the Korean Patent Act.) Some plant inventions may fall under this category, but it is not common.

Specific examples of plant-related inventions that can be patented in Korea include those that claim a whole plant or its parts, a method for producing a plant, a method for breeding a plant, a method for producing X in a plant host, plant cells or callus culture, plant genes and vectors. Plants may be claimed in a product-by-process claim as well. As Korea does not distinguish plant-related inventions from other categories of inventions in terms of patentability requirements, all plant-related inventions must satisfy the general requirements of patentability which are industrial applicability, novelty, inventive step and the description requirement, in order for the patent to be granted. Unlike plant variety rights, a field test is not required for the examination.

Korea is also very receptive to the protection of plant varieties. From January 7 2012, all species of plants are now entitled to be protected under the Plant Variety Protection Act. Whereas patents are registered at the Korean Intellectual Property Office (KIPO), plant varieties are registered at three different governmental agencies: KSVS (Korea Seed and Variety Service), National Forest Seed and Variety Center of KFS (Korea Forest Service), and Aquatic Plant Variety Center of NIFS (National Institute of Fisheries and Science). For the breeder's rights to be registered, the plant variety must satisfy novelty, distinctiveness, uniformity and the stability requirement.

As plants are protected by the two different laws, there are differences between the two systems. A method for producing a plant is only patentable as it cannot be registered as a plant variety. A patent is examined based on the description of its specification only, whereas a field test (DUS test) is required for the plant variety. The term of a patent is 20 years from the filing date for the patent, whereas the protection period of a plant variety is 20 years from the registration date with the exception of woody plants (that is 25 years). As for infringements, both civil and criminal enforcement are possible. Enforcements of both patent and plant variety rights can be limited in certain situations, for example the acts performed for research and experimental purposes. In the case of a plant variety, the right is more restricted than the patent, as the farmer's privilege is acknowledged for certain types of plant varieties. Please see the table for comparison.

The value of genetic information and plant resources is increasing. It is worthwhile to pay attention to Korea's plant patent and plant variety protection systems as Korea is a country with rich diversity of biological materials and the commercial importance of the plant industry is continuously growing.

Min Son

Partner, Hanol IP & Law

E: minson@hanollawip.com

HANOL Intellectual Property & Law

6th Floor, 163, Yang Jae Cheon-Ro, Gang Nam-Gu

Seoul 06302, Republic of Korea

Tel: +82 2 942 1100

Fax: +82 2 942 2600

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