Mastering the “Three Killer Moves”
Following our firm’s successful representation of the Scilate (Envy) plant variety case, which was subsequently recognized by the Supreme People’s Court as a landmark case in the judicial protection of plant variety rights, we have frequently been asked about the keys to successful enforcement. Drawing from our practical experience, we have developed an effective litigation strategy we refer to as the “Three Killer Moves’. This term is inspired by the legendary three killer moves of Cheng Yaojin, a character in the Chinese classic Romance of the Sui and Tang Dynasties, known for his swift and decisive tactics that could turn the tide of battle.
The core challenge in plant variety infringement litigation lies in proving that the defendant has used the protected variety without authorization. This evidentiary process involves several tightly connected steps. When properly executed, the “Three Killer Moves’ strategy enables right-holders to build a strong case. These strategic steps are as follows:
1. Notarized Purchase and Testing of Infringing Samples
In cases involving asexually reproduced plant varieties, infringing propagation materials typically include entire plants or parts such as seedlings, stems, roots, or leaves. Where direct access to such materials is difficult – due to a cautious infringer or complex growing environments – it may be feasible to obtain fruit as harvested materials produced from the suspected infringing material. Regardless of whether plant parts or fruit are collected, the entire process should be notarized to meet the evidentiary requirements of the court. Given the perishable nature of these materials, they must be carefully packaged and promptly submitted to a qualified testing institution for analysis. We also recommend notarizing the submission process to ensure the traceability, legality, and consistency of the samples.
2. Notarized Collection and Testing of Samples of Protected Variety
For asexually reproduced varieties such as fruits and flowers, obtaining a reference sample of the protected variety can be challenging, as administrative authorities and depository institutions typically do not preserve standard samples during the examination process. To overcome this, we focus on collecting reference samples that can be reliably traced back to the mother plant identified during the official DUS inspection or to its directly propagated offspring. The collection process must be notarized to ensure the authenticity of the samples. Once obtained, the reference samples should be promptly submitted to a qualified institution for testing, and the submission process should likewise be notarized to maintain a secure and verifiable chain of custody. A notable example of this approach is the “Zhonggan No. 5’ citrus variety infringement case [(2022) Supreme Court IP Civil Final No. 782].
3. Testing
The final and decisive step in establishing infringement is tesing. We engage qualified testing institutions to conduct comparative DNA analysis between the notarized samples of the infringing materials and the reference samples of the protected variety. This analysis is conducted in accordance with applicable national or industry standards, using molecular marker testing methods tailored to the specific plant variety. Where no such standards exist, validated scientific methodologies may be adopted, provided they offer clear, reproducible, and reliable results to differentiate plant varieties. Infringement can be established if the test results indicate that the samples are identical or highly similar.
However, when testing is initiated solely by the right holder, it is common for defendants to challenge the results or request re-testing. Courts will often consult both parties on whether to proceed with additional testing. This puts the right holder in a dilemma: agreeing to re-testing may allow the defendant to submit a different sample, while rejecting it may undermine the probative value of the original report.
To address this, we thoroughly assess whether the original report and the associated evidence chain demonstrate a high degree of likelihood sufficient to prove infringement. Courts typically evaluate such reports based on the following factors: whether both the infringing and reference samples were obtained and submitted through properly notarized procedures, and whether the identification was performed by a qualified institution per appropriate standards. If there is a complete and reliable chain of evidence, and the defendant fails to present valid counterevidence, the court may accept the original report as sufficient to support a finding of infringement.
Notable examples of this approach are the “Hongyunlai’ Guzmania atilla variety infringement case [(2022) Supreme Court IP Civil Final No. 1362] and the “Lucinda’ potato variety infringement case [(2022) Supreme Court IP Civil Final No. 278].
For further information, please contact:
Sunny Su, Rouse
ssu@lushenglawyers.com
