Patent Act Amendment Proposed: Effect of Animal Patents And Plant Patents Not to Extend to Propagated Matters.

According to the amendment to the Patent Act proposed by TIPO, the effect of an animal patent or plant patent will be precluded from operating against the biomaterial obtained directly from the reproduction of the patented subject matter once the reproduction is sold.  That is, use of biomaterials obtained directly from the reproduction of the subject matter of an animal patent or plant patent is legally authorized. 

 

For example, in the case of a plant patent for a GMO papaya, where the patent claim covers the GMO papaya seed, the GMO papaya plant, and the GMO papaya fruit, if the farmer has purchased the patented papaya seed from a legally authorized source, as the seed is naturally used for cultivation, the papaya tree(s) and the papaya fruit grown from the seed legally purchased and cultured by the farmer will be immune from the operation of the plant patent.

 

However, in the case of the papaya tree and papaya fruit cultivated from a patented GMO papaya an ordinary consumer bought on the market for consumption, the consumer will be held in violation of the plant patent for cultivating the GMO papaya as the GMO papaya fruit he or she bought is intended for and only for consumption.

 

According to Article 56 of the current Patent Act, the patentee of a plant patent shall have the exclusive right to preclude other persons from manufacturing, making an offer for sale, selling, using, or importing for above purposes the patented article without his/her prior consent and the patentee of a patented process in connection with a plant patent shall have the exclusive right to preclude others from using such process and using, selling or importing for above purposes the articles made through direct use of the said process without his/her prior consent.

 

According to subparagraph 6 of the first paragraph of Article 57 of the Patent Act, however, the effect of an invention patent right exhausts with respect to practice once the patented articles manufactured by the patentee or under the consent of the patentee are sold.  Nevertheless, given the propagatory nature of plants and animals, if the effect of an animal patent or plant patent is to exhaust once the patented article is sold, the rights and interests of the inventor will be materially prejudiced.  Thus TIPO will propose to amend the relevant provisions of the Patent Act by reference to the EU Biotechnology Directive (98/44/EC).  (2006.06)

/EMA