Kumiai takes a series of patent enforcement actions on Pyroxasulfone

Date:08-14-2024

Kumiai Chemical Industry Co., Ltd. ("Kumiai") is one of the world's leading agrochemical companies with more than 70 years of experience in manufacturing herbicide products. 

Its pyroxasulfone herbicide products have long been trusted by farmers worldwide. According to its recently disclosed annual report, thanks to the strong growth momentum of its flagship product AXEEV (active ingredient: pyroxasulfone), Kumiai's net sales and operating income in 2023 both achieved significant increases, setting historical highs. 

Pyroxasulfone is an isoxazole herbicide developed by Kumiai. Since its first launch in Australia as a pre-emergence soil treatment agent for wheat in 2011, pyroxasulfone has expanded successfully to many countries, including the United States, Argentina, India and Brazil. 

From 2013 to 2023, the sales of pyroxasulfone have steadily increased at a compound annual growth rate of 26%, which is extremely rare in the agrochemical industry, fully demonstrating the market potential of pyroxasulfone and Kumiai's outstanding capabilities in product innovation and market expansion.

Initiating Legal Proceedings in China and Australia

Recently, the author learned from Kumiai’s official website that with the company’s rapid and steady development, some countries and regions have seen suspected infringements of Kumiai's legitimate patent rights related to pyroxasulfone. In response, Kumiai has actively used legal measures to file relevant infringement lawsuits in mainland China and Australia. 

The company also made it clear in its financial report that it will take decisive legal action against infringing its intellectual property rights to protect its competitive advantages and commercial interests globally.

It was reported that on June 28, Kumiai filed a patent infringement lawsuit against a Chinese company and its subsidiary in mainland China. Kumiai requested the court to prohibit them from engaging in activities that infringe upon Kumiai's intermediate compound patent, which protects a critical intermediate compound required for the production of pyroxasulfone herbicide. In addition, Kumiai demanded compensation for the relevant damages from the two companies.

In addition to filing patent infringement lawsuits in mainland China, on April 26 this year, Kumiai filed a patent infringement lawsuit against ADAMA Australia Pty Limited in Australia regarding pyroxasulfone, accusing it of distributing and selling the infringing product Novali 850 WG pyroxasulfone (APVMA Product Number 90790) in Australia. On July 19, the Federal Court of Australia finalized the proceeding. ADAMA Australia Pty Limited committed to the Federal Court that during the term of the invention patent owned by Kumiai in Australia, it would not sell, offer to sell, or otherwise dispose of, use, import, or keep for the purpose of doing any of those acts, APVMA Product Number 90790 or any pyroxasulfone products produced by the process claimed in the patent, without Kumiai's permission or authority.

Additionally, on July 5, Kumiai initiated a second court proceeding in Australia concerning a third-party pyroxasulfone product. According to Kumiai's official website, the new patent infringement lawsuit in Australia involves a pyroxasulfone product called Kudos 850WG. The case is still in progress.

Patent Wars Sound a Wake-up Call for Agrochemical Companies

Kumiai has launched a series of patent enforcement actions worldwide in response to the infringement of pyroxasulfone products in the market. Intellectual property rights must be effectively protected for innovation entities to ensure that innovation income can be reinvested in new rounds of innovation. This creates a virtuous cycle of mutual promotion among R&D investment, technological progress, and increased income, thereby promoting the overall innovation and development of the industry.

Kumiai holds a global patent portfolio, including but not limited to patents related to the pyroxasulfone herbicide's active ingredients, intermediates, and processes in various countries and regions. Although the patent for pyroxasulfone compound in AXEEV has expired, Kumiai's patents for intermediates and processes related to pyroxasulfone remain valid.  After checking the China National Intellectual Property Administration (″CNIPA″) website, it was found that a Chinese invention patent related to pyroxasulfone of Kumiai was recently challenged, but the CNIPA upheld the patent as granted. 

Kumiai's series of Patent Enforcement Actions around pyroxasulfone worldwide have warned agrochemical companies to respect intellectual property rights and avoid patent infringement. According to the patent laws of most countries, patent owners have the right, based on valid patent rights, to request local courts or relevant law enforcement agencies to require infringers to stop manufacturing, selling (including exporting), offering to sell, licensing, using, or importing any infringing products, and to demand compensation.