COMMON BUT VERY AVOIDABLE MISTAKES IN PLANT PATENTING

Protect Those Cultivars, But Do It Right

Plant breeders must devote many years and tremendous effort to develop a new plant variety with strong commercial potential.  In order to protect all that effort from illicit copying (propagating), many choose to seek protection under the U.S. plant patent system.  There are some common mistakes that many breeders (and attorneys) make when they are first learning how the plant patent system works.  The three most common are (1) naming the variety in a way that is incompatible with trademark protection; (2) misunderstanding the flexibility of filing-date and disclosure requirements; (3) incorrectly timing the filing of the application.

Don’t Mess Up Your Trademark Rights

When a plant breeder has spent years, or even a decade, developing a new plant variety and has finally made selections and propagation and gone through all the steps to really confirm that a variety has great commercial potential, it is not uncommon to be thinking almost entirely in commercial terms and to have a favorite “sexy name” for their new and exciting variety. The problem is that the sexy name is going to function as intended — in the capacity of a trademark associated with that variety. Trademarks are great, but the plant breeder also must select a “generic name” for the variety. And the tricky part is that the generic name is, by definition, a name that can be universally used in reference to the variety, without infringing anyone’s trademark rights.

Therefore, it is actually necessary for each commercial variety to have TWO names —

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By Dale Hunt – The opinions expressed here are the author’s own and do not necessarily reflect those of his professional colleagues or his clients.  Nothing in this post should be construed as legal advice.  Meaningful legal advice can only be provided by taking into consideration specific facts in view of the relevant law.

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  1. […] If the cultivar is found to have the requisite distinctness, uniformity, and stability, and the application has been published at least six months, then it can move on to being granted.  There are some other formalities required before the Canadian PBR can be granted.  One interesting requirement is a statement confirming that no Canadian trademark or similar indication has been, nor will be, applied for or received for the denomination (cultivar name).  If this seems odd, you should read this post. […]

  2. […] 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. […]

  3. […] For information on what it takes to get a plant patent, click here, and for some common “rookie mistakes” to avoid click here. […]

  4. […] For any strain that 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 strains that you may want to patent, click here. […]

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