[1] Whether the plant variety right of a known plant variety has its effect where an application for transfer or assignment (including display for transfer) of the protected plant variety reproduced after the date of publication of the application is made by propagating the seeds of the protected plant variety before the date of publication of the application (negative)

[2] Criteria to determine whether an act violating the prohibition provisions under the Administrative Act is effective or not, or whether the court has refused to provide assistance to realize the legal effect arising from the act

[3] The legal nature of Articles 137 and 138(3) of the former Seed Industry Act, which provide for registration or reporting in cases of seed business or sale of some seeds (=control regulations)

[1] Considering the contents and legislative purport of Article 13-2(1)3, (3), and (4) of the former Seed Industry Act (wholly amended by Act No. 11458, Jun. 1, 2012); and Article 34-2 of the same Act, the holder of a plant variety right shall be deemed not to have the effect of the plant variety right known to him/her, even if he/she has subscribed to transfer or transfer (including exhibition for transfer) the seeds already reproduced after the date of publication of the plant variety protection, if he/she has reproduced the seeds of the protected plant variety before the date of publication of the application for publication of the protected plant variety.

[2] Whether or not there is an effect or restriction of an act violating the prohibition provisions under the Administrative Act, or whether or not the court refuses to provide assistance to the realization of the legal effect arising from the act, is a matter concerning the legal effect within a broad sense of the relevant provisions, and is determined by the interpretation of the legal provisions. Therefore, if there is a express provision, it must be followed as a matter of course, and if not, in light of the purpose and meaning of the prohibition provisions, it shall be ultimately determined by examining whether or not the invalidation or restriction

[3] Article 137 of the former Seed Industry Act (wholly amended by Act No. 11458, Jun. 1, 2012) provides that a seed business shall be registered with the head of a Si/Gun with at least one seed quality manager equipped with certain facility standards. Article 138(3) of the same Act requires the Minister of Food, Agriculture, Forestry and Fisheries to report to produce, import, and sell seeds of a variety laid open or a variety recorded in the catalogue of varieties, i.e., the seeds of a variety recorded in the catalogue of varieties, or the seeds of a variety recorded in the catalogue of varieties, to be subject to criminal punishment pursuant to subparagraphs 3 and 5 of Article 173 of the same Act. Such registration system and reporting system provide that “the protection of the right of the breeder of new varieties of plants, the management of variety performance of major crops, the production, certification, and distribution of seeds, and the promotion and support of seeds industry, etc., to the extent that they do not clearly violate the aforementioned provisions, such act should not be deemed to be an exceptional act to achieve the purpose of development of seed industry.

[1] Articles 13-2 and 34-2 (see current Article 38 of the Act on the Protection of New Plant Varieties) of the former Seed Industry Act (wholly amended by Act No. 11458, Jun. 1, 2012) / [2] Article 105 of the Civil Act / [3] Articles 137 (see current Article 37) and 138 (3) (see current Article 38 (1)) of the former Seed Industry Act (wholly amended by Act No. 11458, Jun. 1, 2012)

[2] Supreme Court Decision 2008Da75119 Decided December 23, 2010 (Gong2011Sang, 207) Supreme Court Decision 2016Da259677 Decided February 3, 2017 (Gong2017Sang, 520)

The Steering Committee of the University of the United States of America and one other (Attorney Park Sung-sung, Counsel for the plaintiff-appellant)

Defendant (Law Firm Jeong-dam, Attorney Lee Han-soo et al., Counsel for defendant)

Patent Court Decision 2017Na2615 Decided November 15, 2019

All appeals are dismissed. The costs of appeal by the plaintiffs are assessed against the plaintiffs, and the costs of appeal by the defendant are assessed against the defendant.

The grounds of appeal are examined.

1. Judgment on the plaintiffs' grounds of appeal

A. As to the first ground for appeal

According to Article 13-2(1)3 of the former Seed Industry Act (wholly amended by Act No. 11458, Jun. 1, 2012; hereinafter the same), a plant variety the establishment of which has been registered in a foreign country shall be deemed new if an application for plant variety protection is filed within one year from the date the plant or species of crops eligible for plant variety protection are determined by Ordinance of the Ministry for Food, Agriculture, Forestry and Fisheries. Meanwhile, Article 13-2(3) of the same Act provides that the effect of the registered plant variety right shall not extend to the exploitation of the plant variety before the date the application for plant variety protection is published, and Article 13-2(4) provides that a person who runs or prepares for the exploitation of the plant variety within the Republic of Korea before the date the application for plant variety protection right is published shall have a non-exclusive license for the plant variety protection right within the scope of the purpose of the project being implemented or prepared, and a person who has a non-exclusive license in such cases shall pay reasonable consideration to the plant variety right holder.

In light of the contents and legislative purport of the relevant provisions, and Article 34-2 of the former Seed Industry Act, considering the fact that a variety protection right holder has exclusive rights to exploit the protected variety for business purposes only from the date of publication of the application, and that a variety protection right holder has exclusive rights to exploit the protected variety, if the seeds of the already-known variety were reproduced before the date of publication of the application, it shall be deemed that the effect of the variety protection right of the already-known variety does not extend to a transfer or assignment (including exhibition for transfer) of the protected variety, which constitutes an act of exploitation of

In the same purport, the lower court determined that the plant variety right is not effective as to whether the Defendant reproduced the seedlings, etc. known to the Defendant before the date of publication of the plant variety protection, and then made an offer to transfer or transfer them (including exhibition for transfer) after the date of publication of the application. In so determining, the lower court did not err by misapprehending the legal doctrine as to the interpretation of “working” under Article 13-2(3) of the former Seed Industry Act, contrary to what is alleged in the grounds of appeal.

B. Regarding ground of appeal No. 2

Whether an act violating any prohibition provision under the Administrative Law is effective or limited, or whether a court refuses to provide assistance in the realization of legal effect due to such act is a matter of law effect within the broad sense of the relevant provision, and is determined by the interpretation of the relevant provision of law. Therefore, if a written provision is expressly stipulated, it shall be followed as a matter of course, and if not, in light of the purpose and meaning of the prohibition provision, it shall be determined by examining whether the invalidation or restriction of effect is required (see, e.g., Supreme Court Decisions 2008Da75119, Dec. 23, 2010; 2016Da259677, Feb. 3, 2017).

Article 137 of the former Seed Industry Act provides that a seed business shall be registered with the head of a Si/Gun with at least one seed quality manager who intends to engage in a seed business. Article 138(3) of the same Act provides that a person shall report to the Minister of Food, Agriculture, Forestry and Fisheries for the production, importation, and sale of seeds not listed in the seeds laid open or in the catalogue of varieties, namely the seeds of a variety listed in the catalogue of varieties, and requires criminal punishment pursuant to subparagraphs 3 and 5 of Article 173 of the same Act in the event of a violation. Such a registered system and reporting system provide that “The purpose of the former Seed Industry Act is to achieve the objectives of the Seed Industry Act, including the protection of the breeder’s right to new varieties of plants, the management of variety performance of major crops, the production, certification, and distribution of seeds, and the promotion and support of the seed industry, so that a violation of the above provision can not be readily denied even if its legal effect is not an exceptional provision for the establishment of the seed industry itself, but an exceptional provision for registration and development of the seed industry itself.

Therefore, it cannot be deemed that the Defendant’s act of importing, producing, or selling the protected variety of this case without registration or without reporting is null and void judicially, or that the requirements for establishment of a non-exclusive license under Article 13-2(4) of the former Seed Industry Act were not satisfied due to lack of protected value.

For the reasons indicated in its holding, the lower court recognized a non-exclusive license under Article 13-2 (4) of the former Seed Industry Act to the Defendant. In so determining, the lower court did not err by misapprehending the legal doctrine on the recognition of a non-exclusive license under Article 13-2 (4)

2. Judgment on the Defendant’s grounds of appeal

The lower court calculated the royalty per stock for seeds and seedlings of the protected plant variety of this case and the quantity reproduced after the date of publication of the application for the protection of the protected plant variety, taking into account the circumstances indicated in its reasoning, and determined a reasonable amount for non-exclusive licensee under Article 13-2 (4) of the former Seed Industry Act

In light of the relevant legal principles and records, such judgment of the court below did not err by misapprehending the legal principles concerning the calculation of reasonable price under Article 13-2 (4) of the former Seed Industry Act, or by inconsistent reasoning.

3. Conclusion

Therefore, all appeals are dismissed, and the costs of appeal by the plaintiffs are assessed against the plaintiffs, and the costs of appeal by the defendant are assessed against the defendant. It is so decided as per Disposition by the assent of all participating Justices on the bench.

Justices Park Sang-ok (Presiding Justice)