Hemp IP After the Farm Bill: Patenting Your Genetics – Powerful, Affordable Protection

USDA Plant Variety Protection
When seed-propagated plant cultivars need protection, the alternative to a plant patent is a USDA Plant Variety Protection (PVP) Certificate.  The application process is relatively straightforward – it requires making a seed deposit, paying seed-deposit and filing fees, and filling out some forms that ask questions about the genealogy and selection of the cultivar, its commercialization, traits, and other relevant information. An examination known as “DUS Testing” is conducted to determine the cultivar’s distinctness from other known varieties, the uniformity of the plants within the cultivar, and the stability of the traits of the cultivar across multiple plantings or generations.  When all the forms are in order and the DUS examination is satisfactorily completed, a PVP Certificate is granted.

However, There’s a Problem
There is just one problem, which is built into the Plant Variety Protection Act (PVPA).  It may not be a problem for everyone, but it will be a problem for some.  Under the PVPA, it is allowable for someone to use your protected variety in a breeding program to develop other varieties.  So, your genetics can flow into other people’s varieties; maybe that’s inevitable and you’re not concerned. But, if your variety has some very special traits that you worked long and hard to develop and aggregate into one genotype, you might be extremely concerned, and you may be quite reluctant to cooperate with an IP system that affirmatively gives someone else the right to breed with your otherwise-protected variety.  In that situation, you would probably like to be able to enforce against it.  Fortunately, you do have another option – a US utility patent on your specific variety.

The (Cultivar-Specific) Utility Patent Alternative
The extra-good news is that a cultivar-specific utility patent does not need to have all the negatives that are often associated with utility patents in the minds of many plant breeders and members of the long-term Cannabis and hemp communities.  What are those negatives?

• High cost;
• extreme complications in the preparation/disclosure process; and
• patent claims so broad they seem to risk alienating the goodwill of others in the community.

Granted, not everyone is equally concerned about these issues; however, I hear about them often enough that they are worth addressing here.

Utility Patents – They Can Be What You Want Them to Be
Utility patents are often associated with high cost and complexity.  In the Cannabis industry utility patents have, to some extent, also become associated with a “gold-rush” type of over-reaching for claim scope that is more than seems reasonable.  But, that approach is up to the applicant, and a focused approach to what you seek can also greatly control the cost and complexity of the process.

If the goal is to adequately protect a single cultivar with – or small group of cultivars sharing – a well-defined set of traits, while also protecting their progeny, this goal can be achieved very reasonably with a utility patent.  While a plant patent can only have one claim and can only protect against asexual propagation, a utility patent can have multiple claims.  For example:

1. The hemp cultivar known as XYZ, deposited under accession number ABC.
2. Seed, plants, plant material, plant extracts, or a whole plant of claim 1, or of any progeny thereof.
3. A method of plant propagation comprising crossing a plant of claim 1 or claim 2 with another hemp plant and recovering seed therefrom.

These are, of course, only simplified examples of the kinds of claims that could be written and are designed to illustrate how a utility patent can cover more than a plant patent.

There are several statutory requirements for patentability, but the key ones at issue here are that:

1. an invention must be new and non-obvious;

2. the application must adequately describe the invention; and

3. the application must enable the public to make and use it once the patent has expired.

The requirement for novelty and non-obviousness (1) would be met by the fact that the cultivar XYZ did not exist prior to being bred and selected by the inventor.  The requirements for adequate description and enablement of the invention (2 & 3) are met by making the deposit.  So, if all that is claimed in a utility patent is a deposited plant cultivar and certain things closely related to it, the application can be relatively simple and inexpensive.  Be prepared, though, to make a deposit and pay a fee to the depository that will be in addition to the fees required by the USPTO and by your attorney.

And If You’re Really in A Hurry
You may need to get seeds shipped right away and don’t have time to develop the full strategy you would like, make all your seed deposits, file your PVP application, etc.; or perhaps you’re not sure which of your cultivars are worth all the trouble.  There is one more alternative that will let you get some interim protection in a hurry – without breaking the bank – and make these decisions after you’ve shipped your first harvest and caught your breath.

With the right help, you can file provisional patent applications on your hemp varieties which will give you up to a year to file the actual utility application.  This will give you time to decide whether you really want to file the utility application, spend the money on seed deposits, and jump through all the other hoops necessary to fully protect your varieties.  But, in the meantime, you will be able to legitimately mark the seeds you sell as “patent pending.”

This is a smart way to maximize your opportunity for protection while minimizing and deferring your costs.  However, there are correct and incorrect ways of filing a provisional application to effectively bridge to a later cultivar-specific utility application.  If you choose to go this route, be sure you do it correctly so that the filing date you get is effective.

The Rest of the World is Different
The US is unique in dividing its IP protection for plants based on whether they are asexually or sexually propagated.  In most of the rest of the world, all plant breeders would go to one plant-variety office to file the same type of application for plant-breeders’ rights, regardless of how their varieties are propagated.  In some countries, the breeder may also be able to apply for a utility patent.  Unfortunately, in countries where utility patents are not available, the “breeder’s exemption” will make it possible for others to use your genetics to develop their own varieties. The only way to avoid this will be to keep your genetics off the market entirely or to release your seeds only under extremely restrictive contracts to trustworthy parties.

One universal truth, regardless of where you want IP protection, is that if you have a valuable hemp variety, or multiple varieties, on which you want to build a nationwide business, you definitely need to develop a sophisticated IP strategy that will protect the investment you have made in developing the special genetics embodied in the seeds you are preparing to sell.  This will help you maintain control over the nationwide or worldwide market for and supply of your seed and maintain a sustainable price, season after season.

Get ready to file PVP applications because the USDA is now accepting them.  Prepare to make your seed deposits.  Confer with patent counsel who has experience protecting plant genetics and commercializing plant varieties to schedule and budget for this very important aspect of your business.  Work with your plant IP counsel to prepare and file provisional patent applications (at least) so that you can mark your seed shipments “patent pending” before they go out the door, and consider also shipping them with conditions attached, depending upon the recipient and the nature of the seeds you are sending.

You don’t need a lawyer to tell you that things have really changed lately and will probably continue to escalate and change.  However, it would be a good idea to get some help from a lawyer to make the most of some of those changes.