In a case where Gap foundation in the United States, a variety protection right holder of Blulus plant variety, sought a non-exclusive license on the ground that Eul, a foundation in the United States, sought a non-exclusive license on the ground that the above plant variety was a known plant variety and it was acknowledged as an exception to newness pursuant to Article 13-2 of the former Seed Industry Act, and that Eul's non-exclusive license on the ground that the variety was non-exclusive license on the ground that the newness of the above plant variety is recognized.

In a case where Gap foundation in the United States, a variety protection right holder of Blube plant variety, sought a non-exclusive license to prohibit infringement of a variety protection right against Eul, a corporation Eul, which is a variety protection right holder of Blulube plant variety, and Eul, sells B seeds cultivated by it as the above plant variety, and Eul failed to obtain newness as a known plant variety, and the plant variety right is acknowledged as an exception to newness pursuant to Article 13-2 of the former Seed Industry Act (wholly amended by Act No. 11458, Jun. 1, 2012; hereinafter "former Seed Industry Act"), the case holding that in the United States Article 13(2) of the former Seed Industry Act, the act of assignment without prejudice to newness is prescribed in each subparagraph of Article 13(2) of the former Seed Industry Act, and even if six years have not passed retroactively from the filing date of the first exclusive license agreement, it cannot be deemed that the plant variety right has been invalidated due to lack of newness, and thus, the non-exclusive license of the above plant variety cannot be recognized.

Article 16 subparag. 1, Articles 17, 83, and 84 of the vegetable Variety Protection Act; Article 3-2 of the Addenda (amended by Act No. 11458, Jun. 1, 2012); Article 13 (see current Article 17 of the vegetable Variety Protection Act); Article 13 of the former Seed Industry Act (amended by Act No. 11458, Jun. 1, 2012); and Article 13-2 (current Deletion)

Chonam University Research Foundation (Attorney Jeong Jin-jin, Counsel for the plaintiff-appellant)

Defendant

Gwangju District Court Decision 2014Gahap56098 Decided May 28, 2015

March 2, 2016

1. The defendant's appeal is dismissed.

2. The costs of appeal shall be borne by the Defendant.

1. Purport of claim

A. The defendant shall not, directly or through a third party, engage in any act of propagating, producing, preparing, assigning, leasing, exporting, importing, or offering for transfer or lease (including display for transfer or lease) each plant variety listed in the separate sheet.

B. The defendant shall not print, reproduce, distribute, or prepare and display online posts any advertising materials that advertise each variety listed in the separate sheet for the purpose of paragraph (a) above.

C. An enforcement officer shall publicly announce the purport of the above A and B paragraphs in an appropriate manner (the first instance court determined that the purpose of the claim(c) was to seek “the declaration of provisional execution against paragraphs (a) and (b)”

2. Purport of appeal

The judgment of the first instance is revoked. The plaintiff's claim is dismissed.

1. Basic facts

A. On January 10, 2012, the Plaintiff filed an application for plant variety protection with respect to each Blue plant variety listed in the separate sheet (hereinafter “each plant variety of this case”) with the Korea Seed Institute on January 10, 2012, as an incorporated foundation that has a right to intellectual property, such as patent, trademark, plant variety, and copyrighted work, developed by the U.S. Chonam University. The application for plant variety protection was published on March 15, 2013.

B. The Defendant is operating the Bluber farmer farm in the name of “○○ farm” in the former Chang-gun ( Address omitted), Jeon Chang-gun (hereinafter “○○○ farm”). The Defendant advertised each of the instant plant varieties as the instant plant and cultivated and sold Blulu tree seedlings.

C. The plaintiff filed an application for a patent for each of the instant plant varieties in the United States and completed the registration. The filing date, the date of registration, the date of the first exclusive license contract, and the first distribution date for commercial purposes (the date of the first sale by one of the exclusive applicants of the plaintiff) are as follows:

The date of application for the first exclusive license agreement, which is the date of the date of application for the plant variety in the main text, shall be Level Bael on the commercial date of the first exclusive license agreement, October 7, 2005 on the date of the first exclusive license agreement, and on April 17, 2006, the date of November 18, 2006, the date of November 18, 2006, Canada on April 17, 2006, 2007, October 30, 2007, 2006, April 17, 2006

D. On April 8, 2015, each of the instant plant varieties was registered as follows (hereinafter “each of the instant plant variety rights”).

A variety protection right holder lebling in the main text of the table, the filing date of the application for the plant variety protection right, the date of the application for the registration of the plant variety on January 10, 2012, the term of the plant variety protection right right holder leblbling from April 8, 2015 to April 7, 2040 ( Note 2) of April 10, 2015, Plaintiff Melela on January 10, 2012 to April 8, 2015, the Plaintiff and the United States (U.S.) on April 7, 2040.

April 8, 2015 to Note 2) April 7, 2040

E. The relevant statutes on the instant case are as listed in the relevant regulations in the attached Form.

[Reasons for Recognition] Facts without dispute, Gap's entries in Gap's 1 through 4, 9 through 12, 20, 21, 22, 23, 26, 27, 29, 32 and 39, and the purport of the whole pleadings

2. Determination as to the cause of action

The fact that the plaintiff is a variety protection right holder of each of the variety of this case is as mentioned above, and according to Gap evidence Nos. 9, 10, 31, 32, and 33, the defendant can recognize the fact that he sells Blube seedlings which he cultivated on the Internet, etc. to the effect that it constitutes each of the variety of this case, and that he is not legally problematic because he is a non-exclusive licensee (hereinafter "the defendant's act of exploitation of this case"). Thus, the defendant's act of exploitation of this case constitutes an act of infringing the plaintiff's variety protection right of this case (the defendant's act of exploitation of this case must be judged to be identical to each of the variety of this case, but if the same variety is identical, the defendant's act of exploitation of this case constitutes an act of infringement of Article 84 (1) of the Plant Variety Protection Act, not an act of infringement of Article 84 (2) of the former Plant Variety Protection Act, and the defendant's assertion that the plaintiff's claim of this case is without merit.

3. Judgment on the defendant's assertion

A. The defendant's assertion

The variety of this case is known, and Article 13-2 of the former Seed Industry Act applies to variety protection of each of the variety of this case pursuant to Article 3-2 of the Addenda to the Protection of New Plant Varieties Act. The variety of this case is acknowledged as an exception to newness pursuant to Article 13-2 of the former Seed Industry Act because it is obvious that each of the variety of this case is not new. The defendant constitutes a person who prepares for the exploitation business of each of the variety of this case in the Republic of Korea prior to the date of publication of the publication of the variety of this case, and thus a non-exclusive license has been granted pursuant to Article 13-2(4) of the former Seed Industry Act. Thus, the plaintiff's variety protection right of each of the variety of this case,

B. Determination

1) Organization of issues

The New Plant Variety Protection Act (amended by Act No. 11457, Jun. 1, 2012; Act No. 11457, Jun. 2, 2013) does not recognize a plant variety right for a plant variety known differently from the former Seed Industry Act. Provided, That a non-exclusive license under Article 13-2 (4) of the former Seed Industry Act may be granted to a third party with respect to a plant variety known as an exception to newness, under Article 13-2 (4) of the former Seed Industry Act at the time of its enforcement in Article 3-2 of the Addenda (amended by Act No. 12062, Aug. 13, 2013).

In order to claim the above non-exclusive license, each of the plant variety rights of this case is recognized as a new exception.

However, as seen earlier, the duration of each plant variety right of this case is from April 8, 2015 (the date of registration) to April 7, 2040 (25) and its duration is 25 years from the date of registration, each plant variety right of this case is recognized to be new (where a plant variety right is recognized as an exception to newness, the period of existence is different according to each subparagraph of Article 13-2(2) of the former Seed Industry Act).

Therefore, I would like to first examine whether each of the plant varieties of this case is invalid because it did not have newness, as alleged by the Defendant.

2) Relevant legal principles

Inasmuch as the Patent Act provides that a patent may be invalidated through a separate procedure for invalidation of a patent granted in a case where the patent falls under a certain reason, even if registered invalidation exists and a trial decision that invalidation should be invalidated by such a trial has not become final and conclusive, a patent shall not be granted as an abuse of rights unless there exist special circumstances. However, even before a final and conclusive trial decision on invalidation of a patented invention becomes final and conclusive, a claim for prohibition of infringement or compensation for damages based on a patent right shall not be granted in a case where the non-obviousness of the patented invention is denied and it is obvious that the patent will be invalidated by a patent invalidation trial, barring special circumstances. The court in charge of a patent infringement lawsuit may examine and determine the inventive step of the patented invention on the premise of examining whether the patent holder's claim constitutes an abuse of rights (see Supreme Court en banc Decision 2010Da95390, Jan. 19, 2012). Such a legal principle also applies to a registered plant variety protection right registered under the Patent Act to which the provisions of the Patent Act apply mutatis mutandis to the trial.

3) Determination

(A) the requirements for newness

A requirement for plant variety protection refers to cases where seeds or harvested material therefrom have not been transferred for the purpose of use for at least one year in the Republic of Korea and for at least four years in other countries (six years in cases of fruit trees and tree trees, six years in cases of each plant variety of this case, and six years in cases of fruit trees) (Article 17(1) of the Plant Variety Protection Act).

B) Whether each of the plant variety rights in the instant case constitutes a case where it is evident that each of the plant variety rights in the instant case will be invalidated due

In light of the legal principles as seen earlier and the requirements for newness under the Plant Variety Protection Act, the e-mail (e-mail prepared by Nonparty 1, who belongs to the legal team of Fallreke Nurry) recorded in the Plaintiff’s preparatory document (10 pages) March 6, 2015 with respect to whether the plant variety right of this case is obviously null and void due to the denial of newness, and the Plaintiff’s e-mail (3) recorded in the Plaintiff’s preparatory document of March 6, 2015, which entered in the exclusive license agreement, before entering into the exclusive license agreement (e-mail prepared by Nonparty 1, which was before February 2004 and February 2, 2005, entered that the plant variety right of this case was transferred Belgium and Carelia. However, it is evident that there is no other evidence to acknowledge newness from each of the plant varieties of this case on the date of commercial first distribution (on April 17, 2006) of each of the instant plant variety as well as the date of application for the first invalidation agreement (on 16, 16.18.

As to this, the Defendant asserts that each of the variety of this case had already been using the name of the variety in 2005, and that for the other variety of this case had already been already applied for a license agreement, more than one year has passed since distribution of the variety. According to ordinary supply procedures, at least six months have passed since the date of commercial distribution of each of the variety of this case (each date of April 17, 2006). Considering that the Plaintiff had already transferred the seeds of this case for commercial purposes before the date of the first exclusive license agreement, it is difficult to conclude that each of the variety of this case had already been transferred from the date of domestic application to the 6th day before the date of application that it had already been transferred for the purpose of using the variety of this case for the purpose of 6 years prior to the date of application, and that Article 17 of the former Seed Industry Protection Act does not apply to the Plaintiff’s new seeds or harvested seeds for the purpose of packing test, quality inspection or small-scale processing test, and that each of the above research institutes and harvested seeds of this case were not assigned to the Plaintiff.

C) Determination as to whether the defendant has a non-exclusive license

As long as the existence of each plant variety right of this case is recognized as newness and each plant variety right of this case is established, the defendant's assertion under the premise that the plant variety right has a non-exclusive license that can be established at the time of recognition as an exception to newness is without merit.

4. Conclusion

Therefore, the plaintiff's claim is justified, and the judgment of the court of first instance is just, and the defendant's appeal is dismissed. It is so decided as per Disposition.

[Attachment 1] List: omitted

[Attachment 2] Relevant Provisions: omitted

Judges Red motors (Presiding Judge) Gangwon-do;

(1) On January 10, 2012, the Plaintiff filed an application for registration of plant variety protection (application) with respect to each of the instant plant varieties on January 10, 2012, and on May 14, 2015, the date of application for each of the instant plant varieties was corrected ex officio from February 27, 2012 to January 10, 2012.

2) On May 14, 2015, the National Seed Board corrected ex officio from April 16, 2031 to April 7, 2040 the termination date of the term of plant variety rights with respect to Belgium plant variety protection rights.

3) The Plaintiff entered into an exclusive license agreement on January 18, 2006 with respect to Fallreek Neverry and Belgium varieties, and on March 1, 2006 with respect to Celelia varieties.

4) The Defendant initially asserted that, in relation to the initial date of determining newness, the application should be based on the filing date of the application or the date of publication of the application when the application was filed in a foreign country (the preparatory document as of August 30, 2014). However, the Defendant amended the claim that it should be based on the initial date of the exclusive license, not on the commercial first date of distribution (the preparatory document as of January 6, 2015).