Infringement determination and applicable law for “similar varieties”

In civil disputes involving infringement of plant variety rights, it often arises that the two observed or tested samples do not belong to the “same variety” and “different variety,” but rather to the “similar variety.” In such cases, determining the infringement of “similar varieties” is often the focus of the dispute. Therefore, researching the infringement determination and legal application of “similar varieties,” and further clarifying the standards for determining plant variety infringement, has significant practical implications.

Clarifying the standards for determining plant variety infringement is crucial for protecting the rights of plant variety breeders. It helps maintain market order, preventing both infringement and the abuse of intellectual property rights. It encourages innovation in the breeding field, providing impetus for the development of agriculture and horticulture. Furthermore, clear standards also help raise public awareness and respect for intellectual property protection, thereby creating a fair and competitive innovation environment.

I. The Meaning of “Similar Variety” in this Article

Broadly understood, a similar variety can be understood as a variety of the same species that is close to or similar to the target variety in traits and morphology. However, in the field of plant varieties, the meaning of “similar variety” varies depending on the context. For example, in the national standard GB/T 19557.1-2004[1], the comparison objects are the applicant variety and the similar variety. The similar variety here refers to the variety that cannot be planted and compared with the applicant variety in field observation. Therefore, only the variety with the smallest expected trait difference among the known varieties can be selected for planting comparison. That is to say, it is impossible to exhaust all resources and plant all such varieties in the world in the test field for comparison. So, it is necessary to make a judgment in advance, to determine which existing variety is probably the closest, and use it for comparison. The variety selected after this judgment is the similar variety. The similar variety in this article does not have this meaning. The similar variety in this article refers to the situation where the detection value in the identification result is higher than the threshold of different varieties but lower than the threshold of the same variety when using DNA related technology to identify the authenticity of the variety. At this time, the identification result cannot directly determine whether it is the same variety. It is often concluded that “there is no obvious difference” or “similar variety”. For example, the national standard “Plant Variety Identification MNP Marker Method” [2] clarifies the identification criteria for the authenticity of varieties such as rice, corn, and soybean: when the genetic similarity is less than 96%, the tested variety and the control variety are determined to be “different varieties”; when the genetic similarity is greater than or equal to 96% and less than 99%, the tested variety and the control variety are determined to be “similar varieties”; when the genetic similarity is greater than or equal to 99%, the tested variety and the control variety are determined to be “very similar varieties or the same varieties”.

II. Cases of “Similar Varieties” Infringement Determination

In November 2021, the Qingdao Intermediate People’s Court accepted the case of Jiuquan Huamei Seed Co., Ltd. suing Beijing Ruishengyuan International Agriculture Co., Ltd. for infringement of new plant varieties [3]. The court of first instance commissioned an intellectual property appraisal institution to use the MNP molecular marker method to identify the identity of the accused infringing seeds and the standard samples of the plant varieties involved in the case. The actual genetic similarity of the two within the national standard loci was 97.77%, which is greater than the threshold of 96% for identifying different varieties stipulated in the national standard. Because the values ​​were similar, the identification agency expanded the number of detection sites. After increasing the number of sites by five times compared to the national standard, the test results showed that the genetic similarity between the two was 98.35%. Under these circumstances, Ruishengyuan Company did not provide any contrary evidence to prove that the characteristics and properties of the two were different. Accordingly, the court of first instance found the infringement established and ordered the cessation of infringement, compensation for losses and reasonable expenses. The Supreme People’s Court rejected the appeal and upheld the original judgment in the second instance. In the cases of infringement of plant variety rights by Dangshan County Baoguang Greenhouse Peach Professional Cooperative and Beijing Beifang Fengda Seed Industry Co., Ltd. [4], and infringement of plant variety rights by Henan Jinyuan Seed Industry Co., Ltd. and Shandong Defa Seed Industry Technology Co., Ltd. [5], the accused varieties were also identified as similar varieties based on the genetic similarity obtained from the test, and the infringement was found to be established in both the first and second instances. III. Comparative Analysis of Infringement Determination and Application of Law In the above cases, when the identity identification results showed that the varieties were similar, they were all found to be infringing. This situation seems similar to equivalent infringement in the field of patent infringement on the surface, but it is completely different in terms of the legal basis and internal logic of infringement determination. In patent infringement litigation, equivalent infringement refers to a situation where the accused product or method, compared to the technical solution protected by the claims of the patent in question, includes only equivalent technical features in addition to the same technical features. Equivalent technical features refer to features that, compared to the recorded technical features, achieve substantially the same function and effect using substantially the same means, and are features that a person skilled in the art could conceive of. In patent infringement litigation, equivalent technical features are one of the important bases for determining whether the accused infringing product infringes patent rights. If a structure used on the accused infringing product is substantially the same as the structure, use, and function of the patented product in question, and is a major part of the accused infringing product, the accused infringing product can be deemed to have infringed.

Equivalent infringement in patent infringement litigation is a form of infringement explicitly defined in judicial interpretations [6, 7]. These judicial interpretations clarify that infringement is established when the feature comparison meets this condition. In contrast, in the determination of infringement of new plant varieties, the standards for judging infringement of similar varieties and the scope of protection are not derived from legal documents, but are clarified in the Supreme People’s Court Guiding Case No. 92 [8]. The case involves Laizhou Jinhai Seed Industry Co., Ltd. (hereinafter referred to as Jinhai Company) alleging that Zhangye Fukai Agricultural Technology Co., Ltd. (hereinafter referred to as Fukai Company) infringed upon its plant variety rights. After accepting the case for first instance, the Zhangye Intermediate People’s Court commissioned a testing center to conduct a comparative analysis. The center’s report showed that the number of difference sites between the varieties was equal to 1, which, according to industry standards, should be considered as similar varieties. The report concluded that there was “no significant difference.”

In this case, the court held that for differences of two or fewer sites, other factors should be considered in determining the infringing variety’s rights, such as expanding the number of testing sites or submitting approved samples for testing. In this case, the burden of proof rests with the accused infringer. If Fukai Company submits contrary evidence proving that, through DUS testing, the characteristics and properties of the accused infringing propagation material are different from those of the authorized variety, it can overturn the aforementioned conclusion. Based on the established facts, Fukai Company, even after explanation, failed to provide contrary evidence and did not have the conditions for DUS testing. Therefore, the court found the infringement established.

Based on the above analysis, when the comparison results are similar varieties, the logic for determining infringement is that the right holder has fulfilled its burden of proof and provided evidence that the variety is similar to the original variety. The burden of proof that the variety is different then shifts to the accused infringer. If the accused infringer can actively provide evidence to prove that the variety is different, then the infringer will not bear any liability for infringement. If the accused infringer fails to provide evidence, for example, in the guiding case, after the court’s explanation, the infringer is deemed to have committed infringement.

It is noteworthy that although DUS field observation is a condition for the authorization review of plant variety rights, the accused infringer’s application for DUS field observation is not necessarily permitted by the court. In the case of Liaoning Lianda Seed Industry Co., Ltd. v. Dunhuang Seed Industry Pioneer Seed Co., Ltd. and Inner Mongolia Qirui Agricultural Development Co., Ltd. regarding infringement of plant variety rights [9], the Supreme People’s Court held that Dunhuang Company had fulfilled its initial burden of proof to demonstrate the existence of the infringement. Based on this, if Lianda Company claims that the two have different characteristics and properties, it should bear the burden of proof, such as explaining the seed breeding process and the reasons for the similarity. Field observation and testing are not the only necessary way to refute the claim. Therefore, the court did not grant Lianda Company’s application for DUS testing and determined that the infringement was established.

IV. Conclusion

Clarifying the standards for determining infringement of plant variety rights is of great significance and importance. It can protect the intellectual property rights of new plant varieties, promote the development and innovation of science and technology, and also improve consumers’ trust in products. Therefore, we should strengthen the study and research on the standards for determining infringement of plant variety rights to provide better legal protection for the development of new plant varieties.

References

[1] GB/T 19557.1-2004, General Principles of the Guidelines for Testing the Distinctiveness, Uniformity and Stability of New Plant Varieties.

[2] GB/T 38551-2020, MNP Marking Method for Plant Variety Identification. [3] Supreme People’s Court, Civil Judgment No. 2090 of 2022.

[4] Supreme People’s Court, Civil Judgment No. 613 of 2022.

[5] Supreme People’s Court, Civil Judgment No. 2487 of 2021.

[6] Supreme People’s Court, Provisions of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Patent Dispute Cases [Fa Shi (2001) No. 21].

[7] Supreme People’s Court, Interpretation of the Supreme People’s Court on Several Issues Concerning the Application of Law in the Trial of Patent Infringement Dispute Cases [Fa Shi (2009) No. 21].

[8] Supreme People’s Court, Guiding Case No. 92, Laizhou Jinhai Seed Industry Co., Ltd. v. Zhangye Fukai Agricultural Technology Co., Ltd., Dispute over Infringement of Plant Variety Rights.

[9] Supreme People’s Court, Civil Judgment No. 1200 of 2021.