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Why Open-Source in Cannabis Genetics Doesn’t Work – And How to Fix It

Cannabis Community, Copyrights, Genetics, International Commerce, PBR, Plant Breeding, Public Domain, UPOV

OPEN SOURCE WITHOUT ANY RECOURSE AGAINST VIOLATORS IS JUST AN HONOR SYSTEM

Don’t Kill the Messenger – But Please Read His Blog!

We have all heard of open source and are aware of how well it seems to work in the software industry. And many of us have heard discussions of how desirable it would be to have a workable open-source system in Cannabis breeding. I hate being the bearer of bad news, but a workable open-source system in Cannabis breeding (or any plant breeding), at least one that is in any meaningful way analogous to open-source software, isn’t possible under current laws in most places.

Before you decide to kill this messenger, I do have a proposal for a solution. It’s not a particularly modest proposal but I think it’s an important one and should be pursued. To state it differently, I am IN FAVOR of having open source as an option for Cannabis breeders, but we can’t get there from here unless some major changes in the intellectual property system happen first. So let’s explore those changes, why they are necessary, and how to make them happen.

Open Source vs Public Domain – Not the Same Thing

Open-source systems were created in the software community in order to facilitate sharing, research, understanding and further development of software with fewer restrictions than those governing typical commercial software. However, it is important to understand the difference between an open-source system and an absolutely free-use or public-domain system. In open source the software source code is shared widely but with conditions. In contrast, in a free use or public domain approach the source code of the software would be dedicated to the public – expressly put into the public domain – such that the originator would retain no rights of any sort to control who used the source code, or for what purpose, or under what conditions. Even though open source is associated with broad access and sharing, it still carries conditions. Typically the condition is that software incorporating open source code must itself be made available under the same terms for others to use, study, and build upon.

The motivation behind an open source approach to Cannabis breeding (or any plant breeding) is that the rich genetic diversity available from different sources, different plant breeders, different collections of exotic or rare genetics, ideally would be shared with others. This would be so that they could use their access to this great source of genetic diversity in developing new cultivars as well as simply to preserve biodiversity and improve the overall gene pool of cannabis cultivars developed by plant breeders. So why not just create a free use/public domain system? Because, at least among some participants, there is a reluctance to hand over their special, rare genetic material in the form of seeds or clones for others to use if the recipient would not be willing to share with the community on similar terms. Typically, participants in an open source system are embracing a non-commercial or less commercial approach to breeding and do not want that “community value” to be siphoned off to parties with different values and different goals. They want to restrict access to this precious genetic material only to those who are willing to respect the community and play by the same rules. Obviously, if someone is committed to a fully open sharing of genetic material, they are always free to do that by placing their material into the public domain and letting it scatter as it will. But I don’t think that’s usually what people mean when they talk about open source cannabis genetics.

Software is Different – It Has Automatic Copyright Protection

But first some background so we can fully appreciate the problem: when someone writes code for software, that code is automatically protected by copyright the moment it is written. There is nothing the writer needs to do for that copyright protection to exist other than to write the code. It’s the same for this blog post. As soon as I write it, it has copyright protection. Done. Easy. Automatic.

Of course, if I want to have full leverage to enforce my rights as a copyright owner or be in the best position to get revenue from giving someone a license under my rights as a copyright owner, there are some additional steps I need to take. So there still exists a formal, government-based system to “perfecting” or documenting copyrights, but the law of copyrights in most of the world is that they exist upon creation of any written work having a modicum of creativity and skill.

This makes an open-source system for software easy to create and enforce. Simplifying (because this IS a blog and because open-source software systems are not my area of expertise), an open-source system is an agreement among participants who are willing to abide by the agreement. In simplest terms, it’s a group deal that says “anyone who promises to only use this code in an approved way, and not to use it in a disapproved way, is free to use the code in developing their own software.” Users who abide by those conditions are in compliance and all is well. Those who go outside those conditions and use the code in ways that are not licensed under the open-source agreement are committing copyright infringement and are at risk of being sued, shut down, and liable for money damages.

Legal Recourse is the Essential Stick to Accompany the Open-Source Carrot

Why is this so easy and why does it work so well? Precisely because the code is already (automatically) covered by copyright. So going outside the agreement is plain and simple copyright infringement. The point is that the copyright protection provides recourse against those who don’t play by the rules.

The contrast with plant genetics is clear: there is no automatic protection for plant breeders that would cover their rights in a clone or a seed they originated. The only way to get that kind of protection is to apply for IP rights in the form of a plant patent, a utility patent, a USDA PVP certificate, or analogous rights Plant Breeder’s Rights (PBR) in other countries, almost all of which arise from the International Union for the Protection of New Varieties of Plants (UPOV).*

*In case you are curious about the acronym UPOV, it’s based on the name of the convention in French. For more on the UPOV system, click here or here.

Alternatives to an Honor System

In the absence of any enforceable rights against people who don’t play by the rules, an open-source system for Cannabis genetics is nothing more than an honor system. There is a lot to like about honor systems but we all see the problem—the dishonorable who refuse to play by the rules. In open-source software they are called copyright infringers and can be sued. In open-source Cannabis genetics, they are called sunzabitches and can only be disliked. Do you see the contrast between the two systems, and the inherent problem?

I can only think of three solutions to this. Unfortunately, they are all hard.

Obtain IP protection for everything that is going to be part of the open-source system.
Very strictly control access to the Cannabis genetics only to those who agree to the rules of the system.
Change the law of plant breeding so that any unique genetic selection has some level of automatic protection upon creation.

Let’s analyze the pros and cons of each option:

Obtain IP protection for everything that is going to be part of the open-source system.

One major problem with this is that is seems to run counter to the reason many people want open-source in the first place. They want to keep things simple and many of them are not big fans of IP protection, at least as they think of it. Typically they don’t have any major objections to IP in the form of copyrights, but they see plant IP as something different.

Also, there’s no avoiding the fact it’s quite a process to jump through all the hoops of obtaining IP protection for plant genetics. That’s true even if you are working with someone (like me) who does this all the time and has for decades. It’s still necessary to prepare an application, file it, pay a filing fee, wait a while, maybe do some more work to get it allowed, maybe also make a deposit of seeds or tissue, and pay an issue fee.** So it’s complicated—vastly more complicated than it is with software.

**This is a simplified summary of the various hoops. They don’t all apply in every system. But at least three from the list are unavoidable in any system.

Why would it be necessary to get IP protection for everything in the system? Because you need some kind of legal recourse against those who refuse to play by the rules. In software it’s straight-up copyright infringement. In this scenario it would be straight-up infringement of a patent or a PVP or PBR certificate. Otherwise, again, you’re just using an honor system, when the problem is the behavior of the dishonorable.

Very strictly control access to the Cannabis genetics only to those who agree to the rules of the system.

In this approach, the only people who ever could get their hands on a clone or a seed in an open-source system would be people who had already agreed, in a legally-binding way, to abide by those rules. To be very clear, that legally-binding agreement would be some form of a group contract. So anyone who made such a legally-binding commitment and then didn’t end up abiding by the rules would be in breach of contract. There would be legal recourse against them.

The problem with this approach is security. You’re really just creating a different kind of honor system, one that would be nearly impossible to trace, govern, or enforce if it grew beyond two or three members. In this case the honor system is what people do with the genetic material they get access to. What if they are careless with it and it gets out to a third party who never agreed to abide by the group contract? You can’t be in breach of a contract to which you’re not a party. So there may be some recourse against the careless member of the group, but there’s zero recourse against anyone who didn’t sign that contract.

This means that the system is only as good as the carefulness and security of the system. Imagine how hard that would be to control. It seems pretty much impossible. And this is exactly why people end up seeking IP protection. It gives you recourse against people with whom you never made an agreement – even against people you never heard of until you learned they were infringing your IP rights. That’s usually the exact kind of recourse you need and can’t otherwise get.

Change the law of plant breeding so that any unique genetic selection has some level of automatic protection upon creation.

OK, so we don’t like the problems with the first two options. Let’s just change the law worldwide!

Notwithstanding how hard it would be to change the law in the US and across the world, this approach would make everything after that directly analogous to the open-source software system. So there’s something to like about this. The hardest work is done up-front and once per country, instead of once per plant variety (under approach #1) or instead of constantly (constant perfect security under approach #2).

My Dad is Such a Pain, LOL

I hear the murmurs—every single seed is, technically, a unique genetic combination. It makes no sense to protect every single seed ever created. Here’s my answer: you’re overthinking it. Just because there is automatic protection for every single seed, that doesn’t mean you’re going to do anything with or about that protection for all of them. It’s just a starting point that enables you to do what you want with the ones you care about.

To illustrate, I would guess that almost every text message my teenagers send has copyright protection. OK, not texts that lack any originality, so we can exclude “lol” “wyd?” or “my dad is such a pain” (I’m guessing that’s not ORIGINAL to my kids). But everything anyone writes that has any originality to it is technically protected by copyright. Does anyone choose to do anything with or about all those copyrights? Of course not. That’s not the point. The point is that the valuable ones (like this blog!) have automatic protection without jumping through hoops, paying fees, and waiting for the protection to be granted. So anything WORTH putting into an open-source system brings with it the recourse against those who won’t play by the rules of the system. And recourse is essential to a meaningful, workable open-source system.

International Conventions Work

So all we need to do is change the law worldwide. Don’t be discouraged—it happened with copyrights. For a long time there was no copyright protection without registration. That eventually became a problem—an international wrong that needed to be righted—and something called the Berne Convention was established. 177 of the world’s 195 countries are currently members. The US finally joined the Berne Convention in 1988, only 102 years after its original establishment in 1886. But better late than never, right?

How does an international convention get established? By identifying a problem, promoting a conversation, and taking action. This can happen with government action or with enough attention from non-governmental organizations (NGOs) that are sufficiently committed to change. So consider this one of the first steps in a journey of a thousand miles. But, with enough people understanding the problem and motivated to find a solution, that journey need not be a slow one.

Meaningful Next Steps

If you can think of an alternative to the three hard solutions I have discussed here, please bring it to my attention in the comments or email me at DHunt@PlantAndPlanet.com. I don’t pretend to have all the answers. I’m just a lawyer with some experience who writes a blog. So please suggest some alternatives if you can think of some. (Respectful dialogue is always preferable but if this blog made you upset and that motivates you, bring your passion and I’ll do my best to take the arrows.)
If you think a change to the system of plant IP is worth some of your effort and energy, let’s translate this into more than just a blog. Make a comment or send an email indicating your interest and we will start with a group call and identify some genuine next steps.
If you feel strongly enough about this, you can certainly forward this post to others and ask them to join the movement. I’m pretty sure the Berne Convention in 1886 started with a blog post and some texts and emails—maybe an Instagram rant. If it worked for them, it can work for us.
Maybe you’re aware of another group that is already on this. Please make me/us aware and we can join forces.

Let’s start something.

July 25, 2019/1 Comment/by Dale Hunt

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 —

one is the generic name and one is the trade name. This might make sense in the context of trademark law and policy more generally. Trademarks are not allowed to take generic words out of our everyday language and make them the intellectual property of one owner. Nobody could get a trademark on “Light Bulb,” for a light bulb, or “Doorknob,” for a doorknob, and then claim that everyone who used one of those terms was infringing their trademark. No, the people who use those terms are just speaking the language–using the best words the language has for the things they are talking about. That is what a generic term is. So trademarks CANNOT cover truly generic terms.

Now, applying this back to plant varieties, when a breeder designates the generic name for a variety, this is tantamount to saying “this is a name that anyone can use in referring to this variety, without bumping into any trademark rights — this is the best word for the public to refer to this variety.” And by choosing a generic name for a plant variety the breeder is essentially dedicating that name to the public and foregoing any later claim that the name is the breeder’s trademark. On the other hand, the breeder can also pick a trade name that is not the generic name and that the breeder or the owner of the variety has exclusive rights to use so that the public can identify that name with the sourcing quality of the variety.

In my experience as an attorney representing plant patent applicants and applicants for worldwide plant breeders’ rights, I have seen this mistake made more than once. When I have inherited files from a prior attorney or files that were handled by the breeder without counsel, I often see a name that looks like it would be a great trademark, but used in the plant patent application as a generic name; and then I know downstream frustrations will occur or already occurred, when the trademark application for that name is rejected because it is, by definition, a generic name. There are ways to fix this in the U.S., but the problem is an even bigger headache if the mistake is made under the international convention under which most other countries handle their plant variety rights.

Don’t Delay Your Filing Just to Disclose More – You Really Can Add It Later

Another common mistake, especially among applicants and attorneys who are more familiar with utility patents, is a belief that the application must be complete to obtain a filing date, and cannot be changed after the filing date. This is incorrect. It is possible to get a plant patent filing date with relatively little disclosure. For more details about that, click here. Likewise, it is possible, even very common, to add to the disclosure as part of negotiating the allowance of the application. Utility patents have strong prohibitions about adding “new matter” after the filing date, but adding a more complete description of a new plant variety, after the filing date, is not considered new matter, since it does not actually change the underlying thing being described (the plant variety itself). The goal is to describe it as completely and accurately as possible, and it is entirely permissible to file an application with some very basic information about the variety, and then supply more details later.

A variation on this mistake is filing what is intended to be a plant patent application, but filing it as a utility application. This is also something that has happened on some occasions when someone new to the process assumed that the two systems were the same, or were more alike than they actually are. The “formalities” required for plant patents, including fees and inventor declarations, are not the same as utility patent formalities. One of the first Cannabis cultivars that was the subject of an attempt to get a plant patent was originally mis-filed as a utility patent, which caused quite a lot of unnecessary delay and paperwork for the applicant. This is just one of those things someone who hadn’t previously filed a plant patent may not catch the first time around.

This misconception regarding how much you have to disclose to get a filing date can matter when some sort of commercial activities may put the patentability of the variety into question. Suppose a commercial sale of a large order of plants (clones) of the variety is about to be made, but someone has the mistaken notion that they need to have the complete, detailed information about the variety in order to be able to file the application. This would either unnecessarily delay the sale, pending the filing of the complete application, or it would cause the owner of the variety to believe that it is necessary to forego patenting in order to not delay the sale. In reality, it is usually possible (if not ideal) to file a plant patent application within a few days of deciding it needs to be done.

Know Your Deadlines and What Creates Them

This timing issue is a form of the third mistake — not realizing that a plant patent application can be filed even before all of the information that will eventually be required for allowance is available. The other form of the third mistake is filing too early. As noted in this post, developing a new variety takes a long time, and some of that time may involve test-growing the plants in various settings, trialing harvested material, even selling harvested material. If the breeding and commercialization team does not understand what leads to loss of novelty (public availability of asexual propagating material of the variety), and what does not (e.g., sale of harvested material*), the team can make the mistake of filing the plant patent application too early. Why would that matter? Because the patent will expire 20 years after the filing date, so filing no earlier than necessary will result in a longer practical term of protection.

Understanding what is unique about the plant patent system can help plant breeders and companies avoid these and other mistakes. So, to borrow a line from the notorious Christopher George Latore Wallace:

And If You Don’t Know, Now You Know

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.

February 1, 2019/4 Comments/by Dale Hunt

WHAT IS THE PUBLIC DOMAIN?

We Are Free to Use What Is In the Public Domain – It Belongs to Everyone

We’ve all heard of the term “public domain.” But what does it mean and how does it relate to intellectual property? The public domain can be thought of as everything that belongs to the public, rather than to any one person — things the public is free to use without encumbrance, having to pay a fee, or facing risk of a lawsuit. Knowledge gained by academic researchers or long-known to everyone is part of the public domain. We can all use that knowledge without paying anyone a fee. That is public domain. Likewise, the subject matter of an expired patent, or something that was never patented, is also part of the public domain*.

There are other things that are in the public domain that ‘belong’ to the public, such as free use of the language to communicate. Imagine if someone tried to trademark the word ‘joint’ for their marijuana cigarette product saying, “Now this word belongs to me and to my product and, if you use it, I will sue you.” No rational system would permit that, because it would take ‘joint’ out of the everyday vocabulary; that word is part of the public domain.

IP Should Never Take Something OUT of the Public Domain

What about a marijuana plant cultivar that has been

known and used for a long time? Can someone who is newly commercializing it (or something with its properties) successfully patent it or write patent claims that include such a cultivar within the scope of the claims? We are well-aware that people are trying to do just that. Our visceral reaction tells us this is wrong; and it is also rejected by public policy everywhere that patents exist. It should never be possible for a new patent to take something out of the public domain and to restrict its accessibility.

Sometimes people ask what qualifies for a patent, a trademark, or a copyright. The answer is usually somewhat instinctive: it must be something they created; it can’t be something that has already been around for a long time without that person’s contribution. This kind of instinctual analysis inherently reflects a notion that whatever has recently been created and has value is not part of the public domain and could at least, theoretically, belong to one owner. It is a very important part of intellectual property theory that, once something is in the public domain, intellectual property rights should never be allowed to take it back out.

Protecting the Public Domain from Encroachment by Overbroad Patents

This is the reasoning behind banning trademarks on any generic term; it is also the reason for only permitting patents on things that are new. So when a patent examiner is given a new application to review and determine whether the things that are being claimed are really patentable, he or she looks at the “prior art” — which is really just published information about what is already in the public domain. Part of the process of patent examination is to identify whatever in the public domain is closest to what is being claimed as an invention and, if it is too close, the patent examiner rejects the claims. So, in this way of looking at things, the patent examiner is protecting the public domain from encroachment by a patent applicant.

If something has been known, done, sold, or discussed so long and/or so widely that no one can legitimately claim it is still their own unique secret, that’s public domain — even if that thing (whether public, cultural, academic, or commercial) was never published. Of course, in some industries, the actual public domain and that part of it which is published are not very much alike.

The Problem of Public Domain in the Absence of a Detailed Published History

A great example of this is the marijuana industry, in which the lack of publication was associated with the illegality of the activities. Now that the activities are no longer illegal in many jurisdictions and people are applying for patents, the industry is facing this unique challenge. Patent examiners performing their normal search of relevant publications in the prior art have almost nothing to work with. The lack of relevant prior art can result in examiners allowing patent claims that cover public-domain subject matter, because there’s no prior art basis for rejecting claims that are that broad.

On the other hand, people who have been working in the industry for a long time are very well aware of things that were openly known in the industry but that were never published. Therefore, particularly in the situation of marijuana patenting, there is a large disconnect between what is in the ‘real’ public domain and what is in the prior art.

Coming back to the more general concept, the message regarding the public domain is that people really can at least start by trusting their instincts about whether something should be protected by a trademark, a patent, or a copyright. Is it really new, or does it already belong to the public? That’s the question. The answer gives us a good starting point for discussing whether something should be protectable in an intellectual property system.

* For purposes of brevity, I am using the term ‘public domain’ very broadly; there are exceptions and nuances I won’t go into here, since this is a blog and not a treatise.

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.

December 31, 2018/4 Comments/by Dale Hunt

Suppose you are a plant breeder. You know there is significant demand for a table grape that ripens two weeks earlier than anything currently on the market. Who wants to buy grapes imported from half a world away, where the seasons are different, or grapes that have been sitting in storage, if there could be a freshly harvested and locally grown alternative? The market price for the first local grape to ripen would be far above the average price in the middle of the season.

As a grape breeder you have some tools at your disposal. You have some varieties that do ripen early, but they taste bad and they don’t produce much fruit. You also have some varieties that have fabulous taste and are very productive, but that ripen mid-season when prices are lower. There is a lot of value in combining those traits; it’s worth the effort. So, you cross the early variety with the delicious variety. Will all the offspring be early and delicious? Definitely not — especially if there are several genes that each contribute a little bit to early ripening, and several other genes that contribute to the great flavor and the high productivity. You’re shuffling two giant decks of cards and hoping that, somehow, all the cards you want will end up in one hand. Good luck with that. But of course if you shuffle and deal enough times, eventually you’ll get what you’re looking for — maybe just once, maybe a few times.

So, you cross the two kinds of grapes and harvest thousands of seeds (we’re ignoring, for the moment, that you really want seedless grapes;

there are tricks to working with seedless grapes, but that’s for another article). Even though the seeds all came from the same cross, they are each as different as you are from your brothers and sisters; the same two parents can produce a nearly infinite number of possible combinations.

So you plant literally thousands — maybe tens of thousands — of seeds from this cross. You grow them all, but you know you can’t take a close look at all of them. And you know the ones that will be good commercially need to grow fast and be very healthy. So you mercilessly throw out 99% of the new grape plants and keep only those that are really great in terms of health and vigor. If you started with 10,000 seeds, you’re now down to 100 plants. And you know you’re not going to commercialize 100 different varieties, so there’s still a lot of selecting to do.

You start by letting these very healthy plants set fruit, and you watch for it to ripen. Maybe, if you’re lucky, ten or twenty plants will have fruit that ripens early. So you save those and discard the rest. Now it’s time to see if the fruit is any good. One plant has beautiful fruit that tastes horrible; another has delicious fruit but is such a strange color that nobody would ever buy it to learn of it’s great taste.

Again, if you’re lucky, maybe you’ll end up with three or four plants that grow well and make delicious, pretty fruit that ripens early. You might just be onto something. So, you take cuttings from each plant and make 10 new plants from each variety; you need to see if these varieties can be propagated into acres and acres of identical plants that will all do what you want them to do. Maybe one of your varieties doesn’t like to be propagated, so you know you’ll never be able to make thousands of plants exactly like that one. Maybe one can be propagated with cuttings, but the offspring aren’t as vigorous. But, if you’re truly lucky, one of your special plants will be easy to propagate and will be stable and relatively uniform across thousands or tens or hundreds of thousands of plants, and across several generations.

Now, and only now, do you really believe you have something with some commercial value. You grow more of them under different conditions and see what you can learn about the reliability of the ripening and the productivity. You do some market testing to see if people like them.

Can you guess how many years you have invested in this project — in making ONE new variety? It’s been at least five years and maybe ten or more. You put in all that work and finally have something very, very valuable to show for it.

Can you sell the plants to whomever wants to buy them? Remember, these plants were SELECTED to be easy to propagate. If you sell even ONE plant to someone who doesn’t respect your desire to recoup your investment in developing this new variety, that person could easily make tens, hundreds, even thousands of plants without paying you for anything more than the one plant you sold.

BUT, if you could patent that plant — so that nobody could make unauthorized offspring without paying you a royalty — your investment and work over all those years would not be lost.

Nearly a century ago, plant breeders convinced Congress that there was good justification and need for a patent system to protect newly developed varieties of plants. This was precisely because it takes so much time and effort to breed and select a new variety and vastly less time and effort to make illicit copies of it. And so the “plant patent act” was passed and became part of the larger body of patent law that had existed in the United States since the late 1700s.

As you can see, if there were no patent system covering new varieties of asexually propagated plants (plants made from cuttings of parent plants, rather than from seeds), there would have to be some other — probably complicated — ways of protecting plant varieties, or there would be very little incentive to make new varieties.

So this is the WHY. For the HOW, click here.

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.

December 19, 2018/0 Comments/by Dale Hunt

Plant patents provide a very important tool for people, companies, and universities to protect each new variety of plant they develop. Plant patents protect the developer’s exclusive control over asexual propagation of the new variety. For information about the effort that goes into developing a new plant variety, and the importance of plant patents, click here.

So if you have a plant variety that you want to patent, how do you do it? What do you need?

First, you need to name the variety. To do so, you give the variety a “generic name.” This is NOT the same as the trade name you intend to use for the variety. Do not use the attractive, commercial trade name in the plant patent application. For more on why it is important to avoid that mistake, click here.

A good generic name is one that makes it easy to identify the variety but that won’t even try to double as a trade name. If your name is Mary Smith, and this is a Cannabis variety that was originally bred in 2015, and you are patenting the third selection from 2015, the name could be something like MScann15-3 (Mary Smith Cannabis 2015, third selection). Pick a naming convention that works for you and that you can keep using for all the varieties you might patent. Some breeders name their selections as soon as they show some promise and then only patent a few of the named selections. It’s all about record-keeping and what works for you.

In addition

to naming the variety, you need to identify the parent plants, if you know them. When a new variety was developed via open pollination, you might not know; however, there is a requirement in the patent statute that you indicate the parents if you know them. Intentionally withholding or falsifying information about the parents can be considered “inequitable conduct” and can make the patent unenforceable. For more on that, click here.

You also need at least one or two color photos of the plant showing (if possible) its distinguishing features.

While these few requirements will not be enough to get a plant patent application allowed and issued, they are enough to get a filing date. So, if you’re in a hurry to get a filing date due to some impending commercial release of the variety, you can file with just this much information and add more details later. For a discussion on the theory behind why it makes sense to allow this “adding later” with plant patents but not with utility patents, click here.

If you’re concerned about achieving allowance of the patent as quickly as possible, as a higher priority than an early filing date, then it is important to include a very thorough botanical description of the variety. Each species of plant has its particular features that are most relevant for a botanical description. For example, the fuzziness of the fruit would be a relevant characteristic for peaches, but not for roses. The best way to know what characteristics to include in the detailed botanical description is to look up recent plant patents covering the same species as your variety. The description in an issued patent is, clearly, sufficient to meet the Examiner’s requirements. So that is a good place to start.

In some cases, it is not possible to provide as complete a botanical description as you may see in an issued patent. Perhaps, due to the time of year, you cannot measure the average weight of the mature fruit, for example. It is not uncommon to file an application with a mostly-complete description that still has a few gaps in it. This will result in a rejection by the Examiner, referred to as an “Office Action.” That is not as discouraging or hostile as it may sound. It is really just a letter indicating that more botanical information will be required before the Examiner can allow the application. In almost all cases, a response that endeavors to supply all of the information requested by the Examiner, or that explains why the requested information is not available, will result in an allowance.

In some situations, an Examiner’s search will find something about the variety that may have been published before the application was filed. This will raise the question as to whether the variety was publicly available prior to the filing date. If it was, then the variety may not be patentable.* The Examiner will issue an Office Action that includes a request for further information about the commercialization and whether (and when) plants of the variety were publicly available. Interestingly, if only harvested material was commercialized, but propagating material was never made available to the public, the variety could be patentable even many years after the harvested material was first sold.^ If the applicant can provide information indicating that plants of the variety were not publicly available prior to the critical date*, then the application will be allowed.

Once the application is allowed, there is a deadline to pay the Issue Fee and then, a few weeks later, the patent will be issued. Plant patents are designated with a five-digit number preceded by PP, for example PP12,345. The term of the plant patent is 20 years from the filing date; no maintenance fees or renewals are required.

A plant patent gives the owner the right to exclude anyone from asexually propagating the variety without permission during the term of the patent.

*For a more detailed discussion of when and how novelty for patentability is lost in US plant patent cases, click here.

^The current position of the Patent Office is that 1) novelty for patentability purposes is only lost when propagating material is made available to the public, and 2) the sale of harvested material prior to the filing date does not affect patentability. However, this has not been tested in court.

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.

December 7, 2018/4 Comments/by Dale Hunt

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