Asia IP Profiles Survey Deadline Extended27 March 2020
Asia IP Profiles 2020 ranks IP firms across APAC.
26 January 2021
To limit the outflow of high quality registered plant varieties to foreign countries, the Plant Variety Protection and Seed Act was revised and approved on December 2, 2020. However, this revised law will still be enforced on April 1, 2021, but the revisions regarding the introduction of the approval system of self-propagation will become effective on April 1, 2022.
Unlike the former Act where purchasers of registered seeds or seedlings through proper channels could export them to overseas countries without the breeder's authorization, this time, plant breeders could restrict growing areas and export destinations. In addition, where the former Act also allowed farmers who once bought a registered plant variety or its propagating material from an authorized seller to propagate it in a repetitive manner by using harvested seeds or seedlings, now under the revised Act, farmers need to receive approval for self-propagation from breeder's right holders.
Other changes include the following: Statutory presumption of characteristics of PVR-protected varieties in the enforcement of PVRs, Introduction of fees for DUS testing in the application process, and the Protection of licensees against the subsequent transfer of PVRs.
All of these changes came after a series of smugglings of high-quality registered plants such as the Shine Muscat (a famous muscat grape variety developed by Japanese national agricultural research organization), and the Beni Shuho (a reputable cherry fruit variety developed by Yamagata prefecture) in recent years.
“The revised Act makes it possible for farmers who develop registered plant varieties to take appropriate action against the unauthorized or unintentional outflow of the registered varieties overseas,” says Kenji Kitatani, Associate, TMI Associates Japan. “Some critics accuse the revised Act of prohibiting the long-standing practice of self-propagation by small farmers.
Typically, however, registered varieties are sold to farmers under contracts that prohibit such self-propagation, so the revised Act has no substantial impact on business activities in the industry in this regard.”
He notes that the revised Act only requires approval for self-propagation of "registered" varieties from plant breeder's right holders. “However, most people who oppose the revision misunderstand that it establishes an across-the-board prohibition on self-propagation of all kinds of varieties including "non-registered" varieties or ex-registered varieties like Koshihikari rice,” he says. “That opposition based on misapprehension might have delayed the passage of the bill for about a half year.
Also, some critics do not understand that self-propagation of most registered varieties has been prohibited under contracts between farmers and developers. As such, it is essential to educate those misunderstanding the revision in order to increase acceptance of the revisions.”
For Kensaku Takase, Partner, Head of IP Tech Group, Baker McKenzie Japan, the amendments provide wider protection to PBR holders.
“The amendments can have an adverse impact on farmers in that they will no longer be able to reproduce varieties for their own use without PBR holders' license,” he says. “However, assuming that the Ministry of Agriculture, Forestry and Fisheries (MAFF)'s statistics used in their explanatory notes discussed above is accurate, the impact should be limited.”
He adds that although PBR protection will be reinforced by the amendments particularly with respect to the exportation of propagating materials, to prevent such exportation, the PBR holder's actions to enforce the PBRs (e.g., sending cease and desist letters, filing a lawsuit or recording the PBR with the customs authority) will still be necessary.
“Under the current practice, the number of legal actions taken based on PBRs in Japan appears very limited (for a lawsuit filed based on PBRs, less than one case per year on average) presumably because of the legal costs for such actions, a relatively limited amount of compensation to be awarded by the court and other burdens or obstacles not related to the scope of the PBRs,” he says. “Therefore, it is unclear whether the amendments will effectively reduce burdens currently preventing PBR holders from enforcing the PBRs and dramatically increase the number of legal actions based on PBRs.”
His colleague Tsugihiro Okada, Senior Associate, IP Tech Group, Baker McKenzie says that while the amendments will expand the scope of PBR protection as explained above, it is unclear whether they sufficiently prevent unauthorized exportation of PBR-protected varieties from Japan.
“The amendments rather focus on restrictions on the export of PVR protected varieties from Japan,” he says. “Once the PBR-protected variety is exported to another country, to prevent the reproduction of the variety in the country, PBR registration in the country will be necessary. Unless the Japanese PBR holders actively obtain registrations in foreign jurisdictions, infringers will attempt to export the Japanese PBR-protected varieties to foreign jurisdictions. Even if the amendments provide for the best of what a Japanese law can do, to prevent leakage of Japanese varieties to foreign jurisdictions, Japanese PBR holders will need to file more PBR registrations in foreign jurisdictions.”
As for the future of this bill, he sees an increase in the number of new PVR-protected varieties developed by Japanese researchers if the expanded scope of the protection and other new rules introduced by the amendments incentivize Japanese breeders.
“However, what is more important for the protection of Japanese varieties in foreign jurisdictions is filing PBR in such jurisdictions,” he says. “Currently, the Japanese public organizations do not seem active in filing applications for PBR registrations in foreign jurisdictions. Unless this trend changes, it will still be difficult to effectively prevent leakage of new varieties developed by Japanese agricultural research and development institutions.”
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