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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.

Strain? Variety? Cultivar? Which is Which?

Copyrights, Genetics, Grow Your Business, Hemp, International Commerce, Interview, Marketing, Naming, Plant Breeding, Plant Patents, Plant Propagation

Although I have degrees in botany and plant genetics and have worked with plant breeders for 20+ years, I recently learned that I have been sloppy in my use of plant-breeding terminology. Part of that comes from the fact that the truly geeky among us (the professors who make the rules) sometimes change the rules without telling the rest of us. Part of it just comes from learning by hearing, rather than digging-in and looking up the actual rules. Which, being a lawyer, is something I would never do in other parts of my job. So this post is my effort to clean up my act as far as terminology goes, and to provide an update to anyone else who has questions about these things.

If you already know this, please skip to any other blog post on this site. This is going to be way too basic for you. But since I’m quite fascinated by how much sense this terminology makes, and also by the fact that I didn’t fully appreciate it until now, I’m going to “geek out” on it here. So read on, or click back to more interesting topics, as you will.

Cultivar is Most Correct, but Why?

Let’s start with the “right” word: cultivar. It is a portmanteau or, as my kids would call it, a mashup, of the words “cultivated variety.” A cultivar is a group of cultivated plants that all share the same character or characters that are consistently inherited within the group. This means that the cultivar is defined by the phenotype, and not specifically by the genotype. In other words,

a cultivar is a sort of functional grouping of plants based upon the fact that they fit a certain criterion—the trait or traits the breeder was looking for in selecting the cultivar in the first place.

To obtain and stably maintain important traits in some plants, it is necessary to identify a single plant with those traits and then make exact genetic copies, via cloning. In such cases, the cultivar can only be one that is genotypically uniform. All members of the cultivar are genetically identical. This is the case with cultivars or “varieties” of grapevines and fruit trees, for example. They are asexually propagated and, to put them into the context of other posts on this site, are protected by plant patents. To read more about plant patents, click here.

However, in other plants, the traits that matter in defining the cultivated variety—the cultivar—can be heritable via sexual reproduction. In those cases, essentially all of the seeds produced by a certain event, whether that event is a self-pollination, an open pollination, an F1 hybridization of specific parents, etc., produce plants that display the cultivar-defining traits.

Of course, this makes sense because it is utterly impractical to propagate some plants asexually, and yet these seed-propagated plants are bred, selected, and cultivated to obtain certain desirable traits. Familiar examples of seed-propagated plants are the grains like wheat and rice. IP protection for most seed-propagated plants is available in the U.S. through the USDA Plant Variety Protection (PVP) system. While USDA PVP protection is not currently available for Cannabis cultivars, this post explains what can be done to protect seed-propagated cultivars, cost-effectively, with U.S. patents.

Some plants, like Cannabis and turfgrasses, are propagated both via seeds and by cloning. For example, some Cannabis cultivars have traits that are uniform enough to be seed-propagated and other Cannabis cultivars require clonal propagation to maintain their key traits. This fact demonstrates why it was important to come up with a an inclusive term, like cultivar, that would cover both situations—cultivated varieties phenotypically “uniform enough” for commercial purposes, whether those varieties happened to be genotypically uniform or not. However the cultivation and selection is done, and whatever traits collectively are important enough to define the cultivated variety, that set of traits, uniformly inherited, defines the cultivar.

Varieties Can Be Naturally-Occurring

Now on to the term “variety,” which is conceptually part of the more preferred term “cultivar.” Variety is just a less-specific term, because there can be naturally-occurring varieties as well as cultivated varieties. Nonetheless, it is often used interchangeably with cultivar, probably because in the context of commercial plants and plant breeding, it is implicit that a variety under discussion would be a cultivated one. Even official legislative documents like the Plant Variety Protection Act use the term. So it’s not an incorrect term, just more inclusive than would be ideal, inasmuch as it brings in certain varieties that were of natural origin and, therefore, should not be the subject of intellectual-property protection. The plant varieties produced by nature are and always should remain part of the public domain.

Strain Has No Accepted Meaning

What about the term “strain,” and where does it fit? The term strain appears to be used most often and most correctly in connection with microbes and viruses, and more informally in reference to plants and rodents. In plants it has no official meaning but generally applies to the group of offspring that are descended from a modified plant. I think the main reason people tend to use the term in some situations is because they may receive a sample—some seeds or an individual plant—from someone else. They maintain it through some generations and may keep using the same name as the strain they were given. Or they may give it a new name to reflect any changes that they selected for or that they may just have observed while in their care. Since there is either no need or no formal process for naming or registering this particular genetic line, the strain name they give it is enough. So they refer to it as a strain, just to avoid appearing to elevate the name to some higher level of official evaluation or importance. It seems to be essentially a default status. Kind of a common-law variety or cultivar, so to speak.

This usage appears much more common in Cannabis than in other plants I have worked with. My guess is that this is because Cannabis breeders have not been as involved in the out-in-the-open cultivar development and naming and intellectual-property protection process as breeders of other plants. So maybe it will take a while for the Cannabis community to move from “strain” to “cultivar,” or maybe it will remain a part of the idiom of the industry.

Regardless of whether there is ever a uniform adoption of the term “cultivar” in the Cannabis industry, it’s at least interesting (well, maybe only to me) to understand the extent to which the terms “cultivar,” “variety,” and “strain” overlap, how their usage may have originated, and why the usage might persist. And, now that you have read all the way to end of this post, welcome to the terminology-geek club.

Patenting and the Public Domain

Strain? Variety? Cultivar? Which is Which?

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