보호범위 판단을 중심으로 한 품종보호권과 특허권의 비교

Comparison of Scope of Protection Between Plant Variety Rights and Patents

Plant varieties can be protected either by the Patent Act or by the Plant Variety Protection Act (PVPA) or by any combination thereof. Unlike the subject matter of patents, an abstract solution to a technical problem, the subject matter of plant varieties right is the variety itself (living organism). Since the subject matter of right is different from each other, the scope of protection of a protected variety is not exactly the same as that of a related patent. Therefore, from the perspective of filing strategies, the breeder or inventor of a plant variety needs to exactly understand the differences of the subject matter and the scope of protection between protected varieties and patents. In addition, the scope of protection of a protected variety should be determined on the basis of the physical material, the plants themselves, and not on the description of the variety. It is difficult to describe the characteristics of a plant variety to the extent that it clearly defines the extent of protection as the patent claims. In particular, for assessing the distinctness, uniformity and stability (DUS) criteria, the plant material of the candidate plant is normally compared with control varieties from within the same species in a comparative cultivation. Thus, it is inconsistent and unreasonable to determine infringement based on variety descriptions rather than based on the actual plants. The PVPA does not provide a provision determining the scope of protection of a plant variety. Unlike the Patent Act, there is no description requirement as a basis of rejections or revocations under the PVPA. The characteristics not specified in the variety description, including those specified, should be considered when determining infringement. Although actual plants, as living organisms, may be subject to variations/alterations, the plant material of the protected variety present at the time of infringement and the accused plant material could be compared unless the variation go beyond the tolerance range, in which case the right can not be enforced due to lack of stability. Some difficulties in practice such as difficulties of submitting the actual plant, identifying the characteristics of the protected variety and so on exist even when infringement is determined by variety descriptions. The same principle has been adopted in the U.S., EU and Japan. Nevertheless, the Plant Variety Protection system should be improved in some respects. The case law needs to be developed on the test to determine any variety that is not clearly distinguishable from a protected variety. Although the DNA analysis is not (yet) apt to justify infringement, we need to keep an eye on the development in DNA-profiling technologies. Furthermore, if the scope of protection is not clearly known through the investigation of the register, rebuttal of presumption of negligence should be recognized. Like Article 126-2 of the Patent Act, the PVPA needs to be amended to shift the burden of proof to the accused infringer.