IP Strategies for Your Plant-Breeding Program

market that fall into all three classes, and there is a rational, cost-effective approach to IP protection for any of the three.

For the low-end cultivars, you can either just acknowledge that some good ones will slip away as diamonds in the rough, but that you can’t patent them all.  So you try to sell to people you trust, and you have either a standing, relationship-based agreement or a written agreement that if they propagate more than a certain number of any one of your unpatented but still “exclusive” cultivars, they agree to pay you a certain per-plant propagation royalty.  To keep things simple, you might do the enforcement/accounting on some sort of honor system, but you let them know that only your preferred relationship nurseries get your exclusive cultivars and, if you were to learn that they broke your honor code, they would lose their status as a preferred nursery.

This approach is based upon the fact that you have developed, or are developing, a reputation as someone who generates good genetics — you’re someone to whose cultivars people want access.  So part of the value in this transaction is the current cultivar you’re transferring, but part of it is the relationship and your ability to deliver, or withhold, access to future cultivars.

Depending upon your relationship with other breeders in the area or in the state/region, you may be able to establish a breeders’ association that abides by certain standards and that endorses certain nurseries as being ethical and honorable.  Then those nurseries would have special access to the best unpatented genetics from the breeders’ association, and/or special royalty rates for patented genetics.  If there is enough collegiality among breeders, this could be done.  It has certainly been done in many ag industries and in several states.  You can consult with people who work with other crops, or people experienced in advising with them, to get ideas about how to structure such an association.  You can also click here.

Still on the topic of the low-end cultivars, if you are about to release a cultivar for commercial sale and you’re uncertain whether it might have some potential — it’s “on the bubble” — you could file a simple provisional patent application.  The filing fee is minimal — $140 for a small entity — and preparing the application would not need to cost a lot, because it is possible to file a plant patent application with a relatively limited disclosure and then file the rest later (for more information, click here.

In the case of a provisional that is intended to keep your options open at minimal cost, you wouldn’t even have to add the rest of the disclosure until after deciding whether to file the full plant patent application a year after filing the provisional.  This means that, for a very modest cost, you could preserve your right (delaying your decision) to seek a patent on a cultivar for a year, to see how it does commercially, and then decide whether to live with the honor system and/or some agreements, or to “level up” to real plant patent protection.

For the second type of cultivar, the one that you know will have some persistent market value, you would definitely want plant patent protection.  You can still start in a way that is cheap, quick and simple — with a provisional — while knowing that you will eventually file the full plant patent.  Or you can file the plant patent application directly, right from the start.

Filing the provisional first is simple and delays some of the costs for a year, and the provisional year does not count against the 20-year patent term.  So the plant patent would expire a year later than otherwise.  On the other hand, your enforceable, issued patent will also grant a year later; so, if you’re worried about anyone actually infringing, your ability to take them to court and make them stop would be delayed.  However, the situations in which it becomes necessary to actually enforce a plant patent seem to be quite rare.  For the most part, people tend to leave patented cultivars alone, or infringers become licensees when they are threatened with litigation.

For any cultivar you select and believe you may want to patent, it is important to keep good records and give it a “selection name” that is generic and not the same as your trade name.  For more on the importance of properly naming cultivars that you may want to patent, click here.

When you have a patented cultivar, you can commercialize it in a few ways.

• You can hire nurseries to propagate for you, for a fee, and you remain the owner of all the clones, then you sell all the clones under your own trademark as the breeder and also under the tradename of that cultivar. In doing that, you can eventually develop strong recognition and respect for the overall quality of your line of genetics, as well as brand recognition for your cultivar.  Both of those can be very valuable after the patent expires, because people will still want the “original” right from the source — that is what brand recognition does, and the time to build brand recognition is while you have patent exclusivity and are the only one who can sell the product/cultivar.  For more on developing IP or other legal rights that outlast patent rights, click here.

• Alternatively, you can sell starter clones to nurseries with licenses to propagate and sell plants for a propagation and/or sales royalty. Some nurseries prefer to sell only wholesale, while others sell retail or both wholesale and retail.  Royalty rates may differ and take into account the different sales models.  There are numerous approaches to plant patent/propagation royalty agreements; someone with experience in this area can help you implement the model you decide is best for you.  They can also talk you through the pros and cons of the different models.

In any case, you will want the plants that end up in the retail sales setting to be marked with a patent notice that 1) lists the patent number and the cultivar name, 2) indicates that propagation is prohibited by the patent, and 3) indicates that new plants can only be obtained from an authorized source.  That might seem extremely overbearing, but it is routine in the ornamental plant industry and actually adds prestige to the cultivars that are patented.  For more on commercialization strategies for patented plants, click here.

Let’s move on to that very special third kind of cultivar – the one you know is going to be in demand even after the patent has expired.  This might be unusual in the Cannabis industry, but it certainly has occurred in other crops.  When this happens, some companies, of course, start by getting a plant patent — but they do not stop there.

In some cases, they want to also be able to prevent sexual breeding with the cultivar, control the sale of progeny and/or products made from the cultivar, etc.  To do this, they file for utility-patent protection on the cultivar/cultivar.  Utility patents are more costly and complicated than plant patents, but they also have more flexibility and breadth in what they can cover.  It’s beyond the scope of this blog to go into utility patents in depth; but I will say that if you have a cultivar/cultivar that is extremely valuable, it may be worth protecting it via a plant patent AND a utility patent.  For more on protecting plant cultivars, or families of plant cultivars, with utility patents, click here.

But what about protecting the cultivar even after any patent(s) have expired?  The lucky breeders/owners who have a cultivar worth protecting for that long do not want the expiration of the patent to be the end of the story, and they do not want to have the value of the cultivar leaked away in countries without strong IP protection.  For this kind of plant, where possible and feasible, it can be worth the extra effort to commercialize it in a very different way.  So here is something you might consider if you end up with a cultivar of that third type:

You could exercise permanent, complete ownership of the genetics, worldwide.  You may propagate (or have propagated for you) vast numbers of plants, but you never sell or give away a single meristem.  Nothing.  You maintain the purity of the statement, “I have never sold or given away any propagating material of this cultivar to anyone.  Every plant of this cultivar, anywhere in the world, is my (or my company’s) literal physical property.  These are our proprietary genetics, and no other party has ever had any form of ownership over them.”

So how do you commercialize all over the world while retaining ownership over every single plant?  One approach is to LEASE the plants to the growers.  They sell the harvested material only and, from the proceeds, they pay you a lease on the plants — but you own every plant.  And part of the lease agreement is a ban on any sort of propagation.  If a plant dies, you replace it; they do not.  Propagation is done by a service nursery for a fee.  You retain control and ownership of the genetics at all times.

Meanwhile, as discussed above, you are building the strongest brand recognition possible.  Trademarks do not expire like patents do, so associating a strong brand with this cultivar — and with your company — will still be a beneficial aspect of an IP strategy with or without patent protection and after the patent protection has expired.

While this sounds like a challenging and possibly expensive undertaking, it has some obvious advantages.  This approach to commercialization can work in a country with NO IP system, as long as it has some kind of legal system.  If anyone ever is found to have plants of your cultivar, the plants are clearly stolen property.  In many countries there is criminal recourse, which is more swift, persuasive, and less expensive than IP enforcement.  And there is no expiration.  There are complications related to this approach, to be sure.  It is not necessarily a good idea for just anything; but the cultivars that are exceedingly special and are likely to have a lasting place in the market.