THE PHYLOS FIASCO WAS A WAKE-UP CALL TO BREEDERS
DNA Is Not Required For Patenting — Never Has Been
In the wake of the Phylos controversy, many are wondering about the need for DNA sequence information in patents. That’s a complicated question in some ways, because the answer has some layers and explanations to it. But, in another way, it’s a very simple question. So let’s start with simple: how much DNA sequence information is really required for a plant patent application? NONE. ZERO.
Don’t believe me? I have filed hundreds of plant patents in the United States — at least hundreds — and extending that to the corresponding international plant breeders’ rights applications, I have filed thousands. NONE of them required any DNA sequence information; all of them were allowed without any.
There is a historical reason for this, of course. The legal systems that were created for granting intellectual property for plant cultivars came long before DNA sequence information was even an option. Under those systems,
(a) describing how the cultivar was made (hybridization crossing followed by selection, or mutagenesis, or identification of a mutant or sport among some cultivated plants, for example);
(b) describing the botanical features of the new cultivar, especially those that make it most distinguishable from the closest known cultivars; and
(c) providing photos of the new cultivar.
How Did This Happen, and What Now?
So, to this day, it is routinely possible to file and obtain allowance of a plant patent or international plant breeder’s right registration without any DNA information. But the Cannabis community has become accustomed to submitting samples for DNA analysis, either to Phylos or someone else. Why is that? It may be a combination of a few things:
- good marketing by Phylos;
- a general curiosity about where each strain* of Cannabis fits in relation to every other strain, which curiosity was very well-aligned with Phylos’ marketing;
- a misunderstanding that DNA sequence information does not provide any kind of intellectual property protection; and
- a misunderstanding about the availability and relative simplicity of genuine patent protection for many of the strains that were submitted for DNA testing.
This blog is not intended to discourage anyone from getting DNA information; it is relatively inexpensive and can be quite useful. However, it does not — by itself — provide any kind of intellectual property protection. Meanwhile, filing for IP protection in the form of a plant patent or a utility patent does provide protection and does not necessarily require any DNA sequence information.
The Easiest Comparison Ever
Another reason to weigh the relative importance of IP protection versus DNA sequencing is, perhaps, best posed via the following thought problem:
Suppose I put “Patent Rights” behind one door and “DNA Sequence” information behind another door. Without any special education on your part (just based on what you already know from living in the world, hearing the news, watching TV and movies, etc.) see if you know the answer to this:
Behind Door #1 is something that you can lose if you don’t act within a limited window of time and that will expire within about 20 years never to be recovered but that, if you handle it correctly, can have tremendous value to you or your business.
Behind Door #2 is something that will never significantly change. You couldn’t change it if you tried. You couldn’t hide it if you tried. If someone is good enough at their techniques, they could detect it and reveal it 10,000 years from now from a single seed found inside the frozen stomach of a mountain climber caught in an avalanche.
OK, which one refers to patent rights, and which one refers to DNA sequence? Which one should you be quick and careful about protecting first, and which one will still be there when you need to prove in court that someone stole your genetics? Easy, right?
Is DNA Information Worthless? No — It’s Great
So why, if you can afford both, should you still get the DNA sequence? Does it add any value to your patent application or to your business strategy? Absolutely. That’s why at the beginning of this post I said the answer was both complicated and simple. The simple was that you definitely don’t need it. The complicated is that there is more to it than that.
Even though the DNA sequence will always be there and will always be the same, it’s nice to be able to show — right from the start — that it’s yours and that it corresponds to the plant cultivar (the strain) that you are patenting. And with Cannabis, unlike with some kinds of plants people patent, it may be that the botanical description doesn’t easily distinguish one cultivar from other similar cultivars. So, DNA differences — if they are known and can be pointed out — can help simplify the patenting process.
- Depending on the situation, the DNA information — while absolutely not required — could streamline the examination and make it easier.
- In addition, having in the record in a patent file certain DNA “markers” most likely to be used in a test could simplify the process of enforcing the patent when it becomes necessary to stop an infringing plant cultivar from being imported or sold. If a quick test could show that the infringing plant had all of the same markers as displayed in the patent itself, this could be persuasive to customs officials, for example. So, while this would never be required for patentability, it could be highly convenient for a patent owner.
Make Educated Choices if You Have to Choose
These are just a few examples of why I would never discourage a client from getting DNA information if it would not delay their moving forward with patenting their valuable Cannabis cultivars or other plant cultivars. But if you have any valuable plant genetics and you are deciding whether it is more important to get a DNA analysis or pursue IP protection, go back and think about Door #1 and Door #2. The entire Cannabis breeder community seems to have gotten caught up in a mythology about the benefits of DNA sequence information and the evils or unavailability of patents, and this has been very much to their detriment. Plant breeders need to start protecting themselves and their strains now.
Making Decisions – Ballpark Budgets
Of course, every breeder has to make hard decisions about budgets — when and how much money to spend on protecting a strain. Here are some suggestions about how to do that:
- If you think you have something special that will have commercial value for more than just a few seasons, the most important thing to do is to not release the genetics (seeds OR clones) to anyone before you file for patent protection.
- Your cheapest option for patent filing is a provisional patent application which will only cover you for the first year. After that first year, you will need to decide whether you’re going to go forward with a “real” patent application and what kind. But a provisional application has the lowest filing fees and keeps your options open to file either a plant patent application or a utility patent application or both. Here is an article about what plant patents cover, and this is an article about what utility patents on plants cover.
- It is hard to be precise about budgets, but some ballparks to help you make decisions are as follows:
Less than $1,000 – the best option is to keep personal control over the propagating material, only ever sell flower, and spend the “protection budget” on DNA sequencing.
Less than $5,000 – the best option may be to self-file a plant patent. Check plantlaw.com where we will soon be posting forms enabling you to self-file a Cannabis provisional patent application and providing instructions for self-filing a plant patent.
Less than $10,000 – the best option is to file a plant patent through an attorney. Start with a provisional because (a) it gives you a year to assess the market acceptance of your strain; (b) it delays your costs; and (c) gives you an extra year of patent term.
More than $10,000 – the best option is to file both a plant patent and a utility patent through an attorney. The cost will definitely exceed $10,000 but will be spread over two or more years as the applications progress through the Patent Office. You can also pursue International Protection if desired.
Look for another post soon with more information on filing options. For now, focus on today’s message. It’s time to rethink the relationship between DNA and patents covering plants.
*strain – The Cannabis community has a fascinating relationship with the word “strain” which is even more nuanced than I acknowledge in this blog. But it might be worth reading anyway.
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.
There is information that seems to be overlooked with this idea. Cultivar….what is a cultivar? A cross between two plants….buuuut….(read the following carefully)
“The word cultivar means a cultivated variety; thus, a cultivar is selected and cultivated by humans. Although some cultivars can occur in nature as plant mutations, most cultivars are developed by plant breeders and are called hybrids. A first generation hybrid occurs when a breeder selects two pure lines (plants that would produce identical offspring when self- pollinated) and cross pollinates them to produce a new plant that combines desirable characteristics from both parents.”
So, are hybrid crosses from hybrids that are not genetically stable still cultivars? Most strains are not genetically stable (inbred and back crossed to allow all alleles to go to fixation), so I would argue that most cannabis phenotypes are strains, not cultivars.
I think you are exactly right, and this is why it is actually a good thing and botanically pretty accurate that people in the Cannabis community refer to most of their breeding selections as “strains”–because they are not stable enough to be true cultivars unless they were to be propagated only as clones.
In my blog on cultivars, varieties, and strains, I point out that the definition of a cultivar is “cultivated variety” and that a “variety” is a substantially uniform group. For cultivars, the uniformity in question is sort of arbitrarily based upon whatever traits matter for the cultivation that is being done, but the uniformity is important. Since Cannabis is frequently propagated both clonally and by seeds, a great F1 hybrid can either be a highly unstable “strain” (the seed progeny) or a pretty stable “cultivar” (the clones). Or someone can do a lot of backcrossing over numerous generations to get to a stable seed “strain” and arrive at a seed “cultivar.” In any case, for patenting, stability is required, and the strain would need to be something that could be designated as a cultivar, so the patent applicant would either need to just patent the clonal cultivar or would need to stabilize the seed line.
I’ll just add that I came into the Cannabis industry/community a few years ago with a lot of experience in plant IP and patent law, but I’m still learning about Cannabis breeding, so I really appreciate input from people who have more experience than I do. Thank you for your comment, and if I seems like I’m still missing something I’d really welcome further input.