Some legal issues caused by identification of wild herbal plants

Some Legal Issues Caused by Identification of Wild Herbal Plants- Interpretation and Perspectives of Patent Law Professor of Law, Meiji University, Tokyo, Japan;
Attorney at law, Hayabusa Asuka Law Office, Tokyo, Japan
Takato NATSUI[Abstract]
The purpose of this article is to point out some legal issues in the context of the herbal plant patents.
These legal issues may take place in relation to identification of a plant. Current DNA analysis
technology of plant cells has revealed some confusion or misunderstanding involved in traditional
plants taxonomy. Such a misunderstanding may make the validity of plant patents doubtful. I will
suggest a possible legal resolution after having clarified the mechanism by which such legal issues
would be generated.

[Key words]
DNA, identification, intellectual property, patent, plant, plant varieties, taxonomy

1. Introduction
In 1980 Umberto Eco wrote his best known novel, Il nome della rosa1.

There are numerous

cultivated varieties or hybrids of roses that have unique specification names.

The identifier used to

specify a rose is, quite simply, the name of the rose.

New hybrids of roses can be created throughmating between different roses which could then be distinguished by the name of the roses. A flow
sheet of registered roses describes parent roses or offspring roses of a specific hybrid rose.

Becausethe names of hybrid roses are named artificially, the name of the godparent of a specific hybrid rose
can be identified and retrievable.
On the other hand, there are many artificial hybrid orchids which have been created in recent years,
and in many cases wild orchids discovered newly might be used for plant breeding.

To create a

new orchid, different species of wild orchids (for instance, Cattleya, Epidendrum, Phalaenopsis,
Dendrobium and Paphiopedilum2) have been mated with each other.

To identify which specificwild orchid is the parent of a specific hybrid orchid can be one of the very important issues in theworld of hybrid orchids. However the species belonging to the Orchidaceae family has evolved
relatively recently in the history of flora on Earth, and this species has been and will be evolving

1
2

An English translation by William Weaver is “The name of the Rose” in 1983.
See Prof. Summer’s Web Garden – World Wild Orchids
http://orchids.la.coocan.jp/1Some legal issues caused by identification of wild herbal plants

continuously.3

Due to this, there are many unknown matters concerning wild orchids, and a lot of

undiscovered wild orchid species may be living and flowering somewhere unknown to us. There
are also many wild orchids which have not been identified concretely and remain in an ambiguous
position in the plant taxonomy field, even if that specific orchid was discovered and well-known as a
famous orchid.

Theory on the classification of orchids has changed quite frequently andcontinuously so that any authoritative orchid classification book might become useless after only ten
years of its being published.

In addition, there have been some possibilities that orchid nurseries

for commercial purpose might ship an orchid or orchids with labels or name plates attached under
the wrong species name.
Moreover, what can be said about ordinary higher plants which have already been thoroughly
examined since the times of Carl Linnaeus?

Regarding such higher plants, it seems that every

scientific name (Latin name) has already been determined and there is no doubt of the name of theplants today.
This above mentioned may present similar serious issues that pertain to patent laws.
various patents which are related to herbal plants.

There are

For instance, a patent on the gene of a plant, apatent on a component itself extracted from a plant, a patent on a method of extraction of such acomponent, a patent on application of such a component including medical use or cosmetics, apatent on durability of such a component and reinforcement, a patent on cultivation method of aplant, a patent on method of removal or herbicide of the harmful plant, a patent on medical supplies
and methods of neutralization of poisonous components of a plant and other related patents.
Sometimes these patents may include so-called bio-patents4.
Indeed, it is very common that a scientific name (Latin name) of a specific plant is noted to identify
the plant described in a patent (as patent names, patent claims, detailed explanations, examples,references or citations and so on).

However, if the noted scientific name (Latin name) of the plantis invalid or false then what kind of legal effect or result will be brought about?

At least, it may bepossible to lose the legal effectiveness of a part of or the whole of the patents, because such anincorrect or false scientific name (Latin name) of the plant serves no function in identifying the plant,
to identify any extract or components from the plant, to identify availability or usefulness of suchcomponents or to identify related methods described in the patent.

2. Mechanisms
There have been many duplicated names, incorrect names, misapplication of names of wild plants.
Today, some of such name have been reexamined, denied, removed or changed formally. In thissection, I would like to mention about the mechanisms of such duplication and misapplication and so
3

For example, See Molecular Phylogeny and Character Evolution of Cymbidium (Orchidaceae)
http://ci.nii.ac.jp/naid/110004702089/en/
4
Noel Cox, Technology and Legal Systems, Ashgate, 2006, pp. 194-209.

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Some legal issues caused by identification of wild herbal plantson.
2.1 Popular method - Identification by common namePeople have been defining the names of plants in accordance with their physical characteristics,
utility or danger of the plant for many years.

It seems that the popular name of a plant, which was

gradually formed based on experience, was not a name based on scientific inquiry.

Generally, sucha popular name is called a common name. Because such a common name is not based on
scientific basis, there are many weeds or trees which have the same or very similarcommon names, even if such plants could be classified through scientific examination asa different taxonomical family name, tribe name, sub-tribes name or species name.

Itis very important that the identification of a specific plant by a common name might
incur some risks which would cause trouble and confusion.

This is because thecommon name of a plant is not the same from country to country, geographical area,
linguistically and other cultural factors.
However, there are not a few patents using the common name to identify a specific plant in claims ordetailed explanations of the patent.

There are some cases which seem to be doubtful whether or nota specific plant can be identified as described in the patents.

2.2 Modern botanical taxonomy
The Swedish scientist Carl Linnaeus (1707-1778) is called the father of modern animal and planttaxonomy.

He has a strong belief that 'all creatures were classified, and it must be named' andestablished unique classification method for the family, genus or names of animals and plants which
was named binomial nomenclature.

He applied his method to examine his herbal collection,5

published some great books illustrating the application of his method.
fundamental basis of current botanical studies.

This method became the

However, the classification of plants by Linnaeus

was based mainly on the physical characteristics of plants because Linnaeus lived in an era whenmodern sciences had not progressed so far.

In addition, there were many duplications ofclassification and sometimes clarified incorrectly or gave different names to different plants of thesame species. Afterwards, German Adolf Engler (1844-1930) and Karl Prantl (1888-1911) made
Linnaeus’s system more specific and detailed, correcting mistakes and establishing a newclassification system of plants.

This method has been used for many years and is still in common

use today. Most botanical books, guide books and illustrated books are currently descriptions basedon the Engler’s system.

On the other hand, George Bentham (1800-1884) and Joseph Dalton

Hooker (1817-1911) developed another plant classification system with Engler, and there have been
many books based on Bentham's system mainly in the United Kingdom and the United States.
In the history of plants classification before DNA analysis generation, the newest and most correct
5

Systema Natured, 1758

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Some legal issues caused by identification of wild herbal plants

method is the classification system which American Arthur John Cronquist (1919-1992) established.
However, the systems established by Engler, Bentham and Cronquist were their own theoreticalbotanical systems.

Application of these systems to individual living plants was completed by many

scientists who were located in each nation6.

Besides, botanists of each nation had to examine andapply their classification systems by themselves independently because of the physical distanceseparating them before the age of the Internet.

Therefore, much duplication has taken place. For

example, while a species might be described as Plant A in the United States, the same species might
be described as Plant B in Japan which was a different plant from Plant A in the United States.
In addition, generally human society cannot catch up with the newest theories as quickly as modern
science progresses.

It is impossible to recall all the books written based on an older theory and to

rewrite it based on a newer theory.

Therefore, there are many cases where description of plantclassification in a book is really incorrect under the newest scientific theory, even if the description
was once believed correct.

In plant patent area, even if a plant name in a patent claim wasdescribed correctly based on the correct classification system of the time, such a description became
incorrect or wrong in some years later due to the progress or change of scientific theories or newer
discoveries. There are a myriad of such issues.

2.3 DNA Analysis
The most correct classification method at present is one based on the difference of DNA sequence ofplants.
This is called molecule taxonomy.

Angiosperm Phylogeny Group (APG)7 promotes this method.

According to the knowledge provided by this method, it became clear that there were considerably
many mistakes in previous plant classifications.

In other words, it suggests that the classification inbooks based on traditional methods might incorrect.
In fact, recently, some important changes have been taken place in plant classification based on themolecule taxonomy and many plants are now being re-classified.

As a result, it has become

impossible to correctly identify a specific species based only on the popular common name and eventraditional scientific names (Latin names) including family names and genus names of plants.
To identify a specific species or groups of species through plant DNA, it is necessary to use a DNA
taxonomical ID which can identify a specific DNA of the plant or groups of plants.

However, sucha DNA taxonomical ID is more difficult for ordinary people to peruse than the popular common
names or traditional scientific names (Latin names). This is closely similar to a relation between an
IP address and a domain name on the Internet.
Moreover, a uniform system for such DNA taxonomical ID has yet to be firmly established. In
6

Tomitaro Makino (1862 - 1957) examined and classified many plants in Japan based on Engler’ssystem. He published Illustrated Flora of Japan.
7
http://www.mobot.org/MOBOT/research/APweb/

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Some legal issues caused by identification of wild herbal plants

addition, DNA analysis of every plant itself has not been completed yet at present. Many more
years are needed to complete DNA analysis of every plant on Earth.

Due to this, we have nocomplete flow sheet of plants based on DNA analysis.
Therefore, it seems to be very difficult to specify a plant through DNA analysis based on
taxonomical ID in the case of patents.

People may still have to rely on a more incorrect way thanDNA based identification in the years to come.

2.4 Nationalism and lack of information
In Asian countries, including Japan, the introduction of modern scientific plants taxonomy was quite
late for various historical reasons.

In this area, plant classification based on incorrect information

has often occurred. At the same time, many domestic plants have been classified as endemic
species, due to nationalistic sentiments.
In the case of Japan, the Swedish botanist Carl Peter Thunberg (1743-1828) and German doctor
Philipp Franz von Siebold (1796-1866) were the earliest botanists who visited Japan in the
Tokugawa era (1603-1867) and examined Japanese wild plants. Their research results have been thestarting points of Japanese botanical science and plant taxonomical classification until today.
However, Japanese scientists had been strictly prohibited from learning modern European science
until 1868 when the Tokugawa era came to an end and the Meiji era (1868-1912) began.

In theMeiji era, the Japanese government introduced modern European science to make Japan an advanced,
modern nation.

However, at the same time, nationalism grew in Japan and some botanicalscientists began classifying Japanese domestic plants as endemic plants.

Many such classifications

were not correct, because they were influenced by nationalistic sentiments.

The exchange ofscientific knowledge between foreign nations and Japan was once again closed until the end theWorld War II.

It had been quite difficult for Japanese botanical scientists to read the latest scientific

literature at this time.

This period should be thought of as a period of a lack of a flow of

information.

2.5 Misunderstanding or misreading
Over the years there have been numerous incorrect classifications made especially of nationalized
plants.

This is because correct information of newcomer nationalized plants can not be

disseminated from the native country of the plant.

This may be considered another example of alack of information on plants as mentioned above.

2.6 His/her honor
In the case where a person produces a doctoral thesis based on older theories and receives a doctoral
degree and the accompanying honor, such a person may not agree with an opinion which can deny5Some legal issues caused by identification of wild herbal plants

the older theories and the honor of the person.
This is not scientific thought at all.

It can be said that a human being is an existence which has an

unreasonable emotion.
And if the person has authority and prestige in the botanical science field then new theories (often
more correct than the older theories) may occasionally be denied or ignored giving consideration to
the honor of the person.
Judgment on the identification of a plant or on a plant patent in a court trial may be influenced bysuch unreasonable emotion of the person who gives witness or evidence as a famous botanicalscientist.
Sometimes it may be the most difficult matter for every specialist to deny the own unique idea madeby him/her.

2.7 Judgment and recognition based on subjective observation
On the other hand, there is a fundamental problem for botanical taxonomical science itself.
Generally it seems that the botany constitutes a part of the natural science and based onmathematical accuracy. However, it is not right.
Because a plant is a physical existence, it can be observed objectively and the observation results canbe recorded. However, from Linnaeus to Cronquist, the traditional botanical taxonomical science has
been based on observation of outlook of plants. Also due to that judgment to classify a specific plant
has to be done based on observation of the plant by botanical scientists and that every judgment
should be performed as a result of subjective thinking in human brain, the judgment might besubjectivity.
Even in a case of DNA analysis based classification, a part of the classification may be subjective,
because only small part of DNA sequence is important to distinguish one genus or species from theother genus of species. For instance, in the case of a human being, details of his DNA structure of aman who has great mustache is not equal to the DNA structure of another man who has no mustache.
But such a tiny difference between their DNA sequences has no meaning to judge whether a being is
Homo sapiens or other animals.
This is completely same in the botanical taxonomy field. Botanical scientists may be interested onlyin an important part of DNA sequence of a plant to judge the difference of the family, genus andspecies of the plant, but not of individuals belong to the same species. The minimum standard which
can define the difference of the species may be decided based on the subjective examination by
botanical scientists. Therefore if the standard has been changed subjectively then the classification of
the plant may be changed too. Thus it should be remarked that plants classification itself is not aphysical material but is a changeable description after a subjective examination by human.
Because of that every plant name described in a plant is identified based on such a changeable and6Some legal issues caused by identification of wild herbal plants

subjective classification process, legal validity of the patent may be floating too.

3. Legal issues
There are various types of herbal plant related patents.
Issues on identification of a specific plant may affect the legal validity of plant related patent of allthese types. These legal issues can be examined in accordance with a difference of patent types. I
would like to suggest some issues which may be important for the examination of patent claims andcourt trials.

3.1 Validity/invalidity of a patent
A specific plant described in a patent should already actually exist on Earth. A patent of no existing
plant is wholly meaningless as an application of natural science. Also it is impossible to examine
the integrity and utility of the patent. Therefore such a patent is or will be obviously invalid as aplant related patent.
For instance, let’s assume that there is a genome patent which patent claim consists of a gene or
DNA of a certain herbal plant.

In this case, the gene or DNA itself should be specified by an aminoacid sequence and the name of the herbal plant is identified by scientific name (Latin name) ingeneral.

However, if the description of the scientific name is incorrect or false or if the existence ofthe plant was denied by new scientific investigation or discovery after the issue of a patent, then thepatent would be a curious patent in which no existing plant name is described in the patent at all.
If an amino acid sequence itself described in a patent is correct and identified by the name of theamino acid sequence then the patent may be valid partly as an amino acid sequence patent indeed.
However, in this case also, the remaining part of the patent which consists of non-existing plantshould be invalid.

In the case of a patent on method of a composition (including an amino acidsequence) extraction from a specific plant, if the plant name is incorrect or false then the patentshould be wholly invalid. This is also same and true even if the name of composition (or amino acidsequence) is correct and such a composition (or amino acid sequence) actually exists. Because any
plant which does not exist can not create any component at all, and can not consist of any method of
extraction of the component.
Similarly, on utility of patents, if a plant described in a patent does not exist on Earth then the utilityof the plant should be denied.

For instance, in a case of herbicidal component patent which is

described as effective to kill a specific herbal plant but the described plant does not exist in fact,
such a patent has no utility as the described herbicidal product. Such a patent may be invalid
wholly or partly.

3.2 Doctrine of equivalents

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Some legal issues caused by identification of wild herbal plants

In the interpretation of patent claims, the doctrine of equivalents can apply to judge whether or not
one specific plant and another specific plant are same.

This doctrine which was created by the8United States courts at the first stage has been accepted by many jurisdictions and enhanced its
applicable area to various types of patent trial cases9.

In such cases, legal issues on the superiority

and inferiority between different patents shall be judged by the court.
However, this doctrine may cause some legal issues which are very difficult to be resolved.

4. Legislative issues
A similar issue may take place not only with wild herbal plants and their components but also withartificially made plants produced mating or genetic recombination technology.
Concerning the new varieties of plants, the major nations, including the United States and Japan,
have agreed with or have ratified the International Convention for the Protection of New Varieties ofPlants (UPOV, 1961)10.

The Convention was amended in 1991. After the amendment, double

protection of a new variety of plants may be permitted in a particular jurisdiction.

For instance,

new varieties of plants can be protected both by the Patent Act (35 USC) and the Plant Variety
Protection Act (7 USC 2321 et seq.) in the United States, and both by the Patent Act (Act No. 121 of
1959) and the Seeds and Seedlings Act (Act No.83 of 1998) in Japan11.

These laws have different

legislative purposes. The scope and methods of legal protection of these laws are different as well.
However, it should be clearly remarked that double protection on the same new variety of plants may
be given in fact under the patent or other intellectual property protection laws. As a matter ofpossibility, such a double protection may cause unfair trade or other illegal situations mainly on theinternational level.

Only one way to avoid such a double protection is to register and examine thegene information or DNA sequence data of the registered new variety of plants.

Also suchregistered gene information or DNA sequence data has to be able to be easily accessible worldwide.

5. How to avoid legal disputes
5.1 Importance of uniform ID system
Today, descriptions using DNA sequence data seem to be the most certain way to identify a living
species.

It has been believed that DNA sequence is different according to family, genus and speciesof a living being. Therefore, under this belief, if plant A has the same DNA sequence as plant B

8

US Supreme Court, Festo Corp. v. Shoketsu Kinzoku Kogyokabushiki Co., 535 U.S. 722 (2002)
On similar court judgment, See Japanese Supreme Court, case number 1994 (O) No.1083
http://www.courts.go.jp/english/judgments/text/1998.02.24-1994-O-No.1083.html
10
UPOV
http://www.upov.int/index_en.html
11
See Translations of Laws and Regulations in the Web Site of the Japanese Cabinet Office on official
English translation of Japanese legislation.
http://www.cas.go.jp/jp/seisaku/hourei/data2.html
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Some legal issues caused by identification of wild herbal plants

then plant A has to be regarded as the same species as plant B, on the contrary, if plant A doesn’t
have the same DNA sequence as plant B then plant A has to be regarded as a different species fromplant B.
However such an explanation is a bit incorrect. Of course, to be more correct, the whole DNA
sequence of a specific living plant is a mixture. A part of DNA sequence can be used to identify thefamily, genus and species of the plant and another part has no relation to identify them.

But, theintegrated basic scientific theory to separate these parts of DNA sequence of every living being on
Earth has not yet been established.
In addition, even if it is possible to use a DNA sequence (an amino acid sequence) as identification
for a specific herbal plant, it is reasonable to process such sequence data in computer systems but it
is not suitable at all for memorizing and use by human beings.

Of course, ordinary people can not

imagine physical appearance of a beautiful flower when he/she is informed a description by pureDNA sequence data without any information on common names and scientific names (Latin names)of the plant.
Therefore it seems completely doubtful to believe that DNA sequence can be used to easily identify
every specific species on Earth. This has to be clearly remarked.

5.2 Structure of the ID
In general, the identification of a plant has a logical structure which consists of some elements asmentioned below.

Of these elements, the description of the DNA structure can not be duplicated,even if other elements may be duplicated.

There are many duplications of description on scientificnames (Latin names), common names and chromosomal number counts, because they have been
named and renamed by several different people over many years.

Depending on language, social

culture, people’s preference and the history of the society; there have been numerous duplicatednames of plants.

However, the DNA sequence is a pure and definitive physical existence.
ID number

Elements
Scientific name (Latin name)Common name (in English or other languages)
Chromosomal number
DNA structure

Some database systems may be established by using such identification system in different

9Some legal issues caused by identification of wild herbal plants

jurisdictions independently.

Therefore the most important matter for the ID system of plants is arelational data linking mechanism to bind any and all element data recorded in such a databasewhich can indicate the correct DNA structure to identify a specific plant correctly. If such a linking
mechanism can be established on the Internet then everyone can use this database system to find thecommon name or scientific name of a plant. The computer system in the database system could
thus retrieve and compare every element of relevant data recorded in database systems worldwide
through the Internet.

Subsequently, the system would provide a linking table based on DNA

structure element data of the plant as an internal key to retrieve and sort data.
to retrieve every synonym and name using such a database system.

It would thus be able

In addition, such a linking

database system would provide a tree-structured table through which people could identify parent
plants or closely relevant plants of a specific plant on the gene level12.
If such a database system and uniform ID system would be established then no lawyer, judge orpatent examiner would misunderstand the name (identification) of the plant13.

One would thus beable to find the name of the rose correctly.

5.3 Management
If such a uniform ID system can be developed, deployed and used commonly then the mostimportant issue may be who would be responsible in managing this system 14 .

If a specificgovernment or private company would manage the ID system, such a management organization
might prefer to adopt an unjust management style to ensure their own economic profit or status.

In

addition, in a worst case scenario, if such an organization would be able to govern the databasesystems of the ID system then the organization would be able to succeed in governing every
intellectual property right relating to wild herbal plants on Earth.
the critical legal issues mentioned above.

It might be a tradeoff to resolve

However, we have to give careful consideration to andalso examine carefully what entity should manage the ID system.

It seems that the most suitable

way to manage this ID system would be to have it managed by a neutral international organizationsuch as the United Nations or other responsible and relevant international organizations.

12

Due to such important function, such database system can not be used to retrieve human gene data.
Human gene data is one of the most important sensitive data to be protected. On human gene data, EU
Personal Data Protection Directive (95/46/EC) and other similar international and domestic laws shallapply.
13
New technology has large possibility to change the roll of lawyers. See Richard E. Susskind, The
Future of Law: Facing the Challenges of Information Technology, Oxford University Press, 1996, pp.
265-292.
14
See Simson Garfinkel, Database Nation: The Death of Privacy in the 21st Century, Oreilly &Associates Inc., 2000

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