New plant varieties are excluded from patent protection in Taiwan. However, if a new plant variety meets the requirements of "novelty" and "distinctness", "uniformity" and "stability" (DUS criteria), the plant variety may be protected under the Plant Variety and Plant Seed Act (hereinafter referred to as the PVP Act), regardless of whether the variety is produced through biological processes or genetic engineering. According to the statistics, up to the present, thousands of new plant varieties, including new crops and ornamental plants have been protected under the PVP Act in Taiwan.
To obtain breeder's right on a new plant variety, an application with a relevant description and photos must be filed with the Council of Agriculture under the Executive Yuan (hereinafter referred to as the Authority). Breeder's right is granted to the applicant after an application has gone through substantive examination according to the DUS criteria and been published. Breeder's right confers to the right holder the right to prohibit others from engaging (1) production or propagation; (2) conditioning for the purpose of propagation; (3) offering for sale; (4) selling or otherwise marketing; and (5) importing or exporting the protected variety. Furthermore, the protected variety may include the material used to propagate the variety, as well as its dependent varieties, i.e., (1) varieties which are essentially derived from the protected variety; (2) varieties which are not clearly distinguishable from the protected variety; and (3) varieties whose production requires the repeated use of the protected variety. The duration term, calculated from the grant date, is 25 years for a tree or a vine plant and 20 years for other plant species. The right holder may claim damages in the event of infringement, whether intentional or unintentional. When making a claim of damages, the right holder may also request destruction, or other necessary disposal of the infringing variety, or the raw materials or devices used to produce the infringing variety.
Implemented since 1988, the PVP Act has been revised several times to increase the benefit of the holder of breeder's right and to further satisfy the international standards set by UPOV 1991. However, it was not until December of 2018 that the first Judgment regarding breeder's right infringement was rendered by the Intellectual Property Court (hereinafter referred to as the IP Court), a court established in 2008 that has preemptive jurisdiction over the enforcement of breeder's right .
The core scenario of the case is as follows:
An application for breeder's right was filed with the Authority for a new variety of Calamondin, denominated as King Kong, with a description and photos of the morphological and horticultural traits of the new variety submitted.
During the examination of the application, a party attempted to obstruct the grant of the breeder's right, alleging that the applicant's variety is not new, but such contention was not considered by the Authority. The Authority granted breeder's right to the right holder on September 14, 2012 after the application was published on July 20, 2000. The party then filed an invalidation action, alleging again that the granted variety is not new. The Authority rendered a Decision in favor of the breeder's right holder for the reason that the invalidation petitioner failed to submit sufficient evidence to establish a case of "lack-of-novelty."
No sooner than the publication of the application, the breeder right's holder discovered that several persons, including the invalidation petitioner, had reproduced and sold seedlings and potted plants of the protected variety and continued to do so even after the grant of breeder's right. Given this finding, the breeder's right holder filed a civil action with the Civil Court in an attempt to stop the infringing act and claim monetary damages occurring during the period from publication through to grant and the period after grant.
The main issue to be addressed before the Civil Court was whether the defendants' seedlings and potted plants fell within the scope of the plaintiff's breeder's right. The plaintiff, who bears the burden of proof, only submitted photos taken by himself and a DUS test checklist on the characteristics of his own variety, rather than the alleged infringing plant. As the Civil Court considered the evidence insufficient, an expert in the Authority was requested to assess whether the seedlings or potted plants in the defendants' location infringed upon the plaintiff's breeders' right, but the expert was not able to make a determination without detailed analysis. For these reasons, the Civil Court rendered a Decision against the plaintiff.
The plaintiff filed an appeal with the Civil High Court and the case was then transferred to IP Court. The court, with the consent of the two parties, designated an agricultural institution as a court expert that would cultivate the plants of the plaintiff and the infringing plants of the defendants to determine the traits of the plants. The designated institution spent more than three years to formulate an opinion because of the time needed for the plants, including stems, flowers and fruits, cultivated in the institution to become stable. The designated institution rendered an expert opinion concerning the traits of the plants of both parties, as shown in the following photos. Based on such opinion, the defendants were found to be guilty of infringement.
The IP Court also ruled on the award of damages claimed by the plaintiff. According to the PVP Act, the amount of damages payable to the plaintiff should be assessed based on either the damages actually suffered and the interests lost, or on the profits the infringer actually earned as a result of the infringing activities. Should the infringer be unable to provide proof of costs and/or necessary expenses, the entire income derived from the infringer's sale of the infringing plants may be deemed to be the infringer's profits.
The IP Court ordered the defendants to provide evidence relating to the number of infringing plants produced and their sale prices, but no evidence was filed before the oral proceedings. The IP Court therefore calculated the damages based on the sale the price of each plant the plaintiff claimed and ordered the two defendants to award all the amounts claimed, namely, NTD 750,000 and NTD 3,900,000, respectively.
Due to the lengthy time needed to cultivate plants and determine their traits, it is not easy for breeder's right holders to rapidly stop infringement via litigation. Hence, breeder's right holders are advised to take preemptive measures regarding infringement assessment before filing lawsuits, if possible, so as to cut short the time needed to obtain expert opinions after cultivating plants and determining their traits. If more time for an expert opinion is needed, it might be worthwhile to try to, for precaution's sake, obtain a preliminary injunction from the court.