Further safeguards are now available for foreign plant breeders
Korea Seed Industry Act (KSIA) and its Implementing Regulation, effective as of June 19 2020, a person who intends to sell propagating materials of certain types of foreign plant varieties should report this fact to the Ministry for Agriculture Food and Rural Affairs (MAFRA), along with submission of evidence proving that such propagating materials have been "legally obtained" (Article 38 of KSIA, Article 27 of Implementing Regulation thereof). In other words, in order to sell propagating materials of foreign plant varieties in Korea, a seed supplier shall have a duty to prove that he has lawfully acquired the same.
Before the revision of the KSIA, there was an unexpected dispute between local seed suppliers and a Japanese breeder of two citrus plant varieties. In this case, the local seed suppliers had purchased seedlings of the citrus varieties at issue from Japanese farmers and had been selling the seedlings to Korean farmers since 2014. In 2017, i.e. within the novelty grace period, the Japanese breeder filed applications for plant variety protection (i.e. PVP applications) of the citrus varieties under the Korean Plant Variety Protection Act (KPVPA), and provisional protection was given after the PVP applications were laid-open published in 2018. Based on such provisional protection, the Japanese breeder was able to request that the seed suppliers should not produce and sell the seedlings even before the plant variety rights (PVR) were granted. Although there was an issue as to whether provisional protection can extend to the "materials harvested" by the farmers (i.e. fruits), the MAFRA made an authoritative interpretation that the materials harvested during the provisional protection period would not infringe the breeder's provisional right. Thus, the fruits were allowed on the market.
Based on the lessons learned from the dispute case above, the MAFRA has amended the relevant provisions of the KSIA to protect foreign plant breeders from potential infringement of their plant variety rights.
Eligible varieties and evidence
Currently, fruit trees and sweet potatoes are eligible. Therefore, before importing and selling propagating materials of foreign varieties of fruit trees and sweet potatoes, seed suppliers should prove lawful acquisition of the propagating materials. However, this duty is excluded for i) a plant variety for which a PVP application has been laid-open published; and ii) a variety registered in the national catalogue of varieties (rice, barley, bean, corn, potato, etc.).
Required evidence includes documents such as a transaction statement describing names and signatures of transaction parties, variety denomination, and transaction date, etc. In the case of a plant variety for which an application for a plant breeder's right is pending or a plant breeder's right (PBR) is granted in the member countries of the International Union for the Protection of New Varieties of Plants (UPOV), if such variety fulfils the novelty requirement under the KPVPA, a seed supplier should submit a document proving that he is a lawful licensee having a right to exploit the variety (i.e. propagating, producing, assigning, exporting, importing, or offering for sale or lease of propagating material of the variety) granted by the lawful owner of the breeder's right.
Penalties or sanctions (imprisonment for up to one year or a fine of up to 10 million won, about $10,000) will be imposed for non-compliance with the duty described in Article 38 of the KSIA. Further, the registration of the violator's seed business may be revoked, or the violator's seed business may be fully or partly suspended for a prescribed period not exceeding six months.
Further safeguards for foreign varieties to be protected in Korea
Korea has a novelty requirement similar to Article 6 of the UPOV Convention, i.e. a novelty grace period of four or six years from the date of the first sale of propagating material or harvested material thereof for the purpose of exploitation in foreign territories. Therefore, a foreign plant breeder can control the timing of filing a PVP application in Korea within such grace period, if necessary. In addition, the risk of infringement may be reduced by imposing the prescribed duty on potential seed suppliers even before the actual filing in Korea. More importantly, licensing revenue may be more easily generated based on such duty.
As mentioned above, foreign plant breeders may enjoy further safeguards under the recently amended provisions; needless to say, however, in order to ensure protection by a provisional right and a granted PVR, a PVP application should be filed well before the expiry date of the grace period for novelty in Korea. As seen in the Japanese citrus varieties case, the "harvested material" can be covered by a granted PVR rather than a provisional right. The PVR can be granted after successfully passing formality and documentary examination and distinctiveness, uniformity and stability (DUS) testing in Korea.
Further, it is worth considering combining a diverse range of IP for protection of a valuable plant variety. In Korea, a plant can also be protected as a patent. Patentable subject matters include methods of breeding, transgenic plants, plant parts, and new varieties of plants. Trademarks are valuable IP for protecting plant varieties in terms of permanent protection via renewal and a broader scope of designated goods. In this regard, it is recommended that a commercial name different from the variety denomination be registered as a trademark since a simultaneous protection by both a variety denomination and a trademark is not possible for identical or similar names.
Partner, Hanol IP & Law