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Cannabis Patents 2000 – 2019: Trends Following Legalization

Cannabis Community, Hemp, Marketing, Plant Patents, Prior Art, Utility Patents

Guest Writer: Ian Johnson, Registered Patent Agent, Plant & Planet Law Firm

Introduction

Over the past two decades, cannabis has seen increasing public approval, reflected in legalization of medical and recreational marijuana at the state level and federal legalization of industrial hemp. As cannabis and related industries expand, participants are expected to seek competitive advantages, including patent protection. This report examines trends in United States patent filings and issuances related to cannabis since 2000.

While cannabis legalization has been slowly occurring since the 1990s, a significant development was the legalization of recreational marijuana in Colorado and Washington in 2012. Since then, several other states have followed in opening up recreational markets. Therefore, particular attention is given to activity since 2012, as the existence of recreational markets presumably creates greater competition and greater desire to obtain intellectual property protection. This date also conveniently overlaps with the beginning of implementation of the America Invents Act (AIA), which significantly altered the United States patent system. While changes in patent practice post-AIA are beyond the scope of this report, it is useful to examine behavior year over year from 2012 onward to see if legalization has resulting in increased patent activity.

Summary of Findings

Patent activity related to cannabis has increased significantly over the last decade. Filings of cannabis-related patent applications increased 96% between 2012 and 2019, with filings related to recreational and medical cannabis increasing 257% over the same time. The data show that legalization had a demonstrable effect on cannabis patent activity, and that significant resources are being invested in patent protection in the personal use sector of the cannabis industry. These trends are expected to continue, and industry participants should consider this when making decisions regarding business models and intellectual property protections.

Methodology

Research was performed using the LexisNexis Total Patent One database. Results were limited to United States Patent and Trademark Office (USPTO) publications. The following search terms were used:

cannab* – use of the wildcard * returns results for cannabis, cannabinoid, and other variants
mari?uana – use of the wildcard ? returns results for marijuana and marihuana
tetrahydrocannabinol
hemp

The listed terms were searched in the title, abstract, or claims of issued patents and printed publications. Searches were limited by time periods as shown in the detailed results. A complete list of all returned documents was created. Because of the structure of the data, a patent could create multiple documents: an issued patent and one or more published applications. For year-over-year results, these duplicates were not removed. This is not considered significant, as publication of an application and issuance generally occur in different years so double counting is minimal. However, duplicates were removed in calculating the number of filings each year to avoid inflation of filing numbers.

Detailed Findings

Overall Cannabis Patent Trends

Cannabis patent activity has increased notably since 2012. Between 2000 and the end of 2011, the USPTO published 3876 documents concerning cannabis inventions. This number consisted of 2865 published applications and 1011 issued patents. Between 2012 and the end of 2019, the USPTO published 5853 documents, consisting of 3980 published applications and 1873 issued patents. This represents 51% more total documents in 2012-2019 compared with 2000-2011. Publications increased year-over-year since 2012, with a 138% increase between 2012 and 2019. The charts below demonstrate this trend.

Because patent applications are generally not published until the earlier of issuance or 18 months following filing, publication trends are presumably delayed from filing trends. Therefore, it is useful to examine filing trends since 2012. Because of the 18-month delay prior to publication, data for any filings after July 1, 2018 are incomplete as such applications may not have been published. Therefore, both actual values from 2012 through 2018 and projected values for the years 2018 and 2019 are provided below. Using actual filings from 2017, there has been a 75% increase in filing activity since 2012. Using the projected filings for 2019, there has been a 96% increase in filing activity since 2012. The following charts demonstrate the increase in filing of cannabis-related patents since 2012 based on application filing date information.

The AIA transitioned the United State patent system into a first inventor to file system, which is expected to encourage the early filing of provisional applications to secure priority rights. Provisional applications are not published and therefore do not contribute to the publication or filing data above. However, provisional filing activity can be inferred by looking at the claimed priority dates for published applications and issued patents. While the AIA did not fully take effect until March 2013, data are presented since 2012 for ease of comparison with other metrics in this report. Due to incomplete data for 2018 and 2019 as noted above, both actual and projected values are provided. Using actual priority claims for 2017, there has been a 58% increase in provisional filing activity since 2012. Using projected priority claims for 2019, there has been an 80% increase in provisional filing activity since 2012. The following charts demonstrate filing trends based on claimed priority date of the application.

Hemp as a Distinguishing Factor

Hemp has generally enjoyed more acceptance for its industrial uses than marijuana, despite the fact that both constitute cannabis. Inclusion of hemp is necessary to return all results for cannabis related patents. However, to provide a better picture of post-2012 activity in the recreational market, a separate set of searches was performed omitting “hemp” as a search term. It is presumed that doing so will return patents and applications that are more focused on the recreational or medicinal cannabis market. This is based on the fact that many of the results obtained through searching “hemp” include inventions with industrial applications, such as plant fiber composites or textiles, rather than inventions related to personal use of cannabis. For convenience, such patents are referred to as “recreational.” Because this method of discriminating does not perfectly correlate with the subject of any given patent, the results pertaining to the recreational market represent general trends rather than exact activity. Nonetheless, the trends are worth noting for an evolving industry.

“Recreational” Patent Trends

Between 2000 and the end of 2011, the USPTO published 2115 documents associated with recreational cannabis inventions. This number consisted of 1623 published applications and 492 issued patents. Between 2012 and the end of 2019, the USPTO published 3427 documents associated with recreational cannabis inventions, consisting of 2373 published applications and 1054 issued patents. This represents 62% more total documents in 2012-2019 compared with 2000-2011. Total publications increased year-over-year since 2012, with a 253% increase between 2012 and 2019. Published applications saw an increase of 275% over that period, with issued patents seeing a 209% increase. The charts below demonstrate this trend.

These findings correspond to the overall increase in cannabis-related patents and demonstrate that the recreational patent sector is growing at an even greater rate than cannabis patents generally. This supports the theory that recreational markets and expansion of legal personal use of cannabis have resulted in an increase in patent activity in the industry.

Again, publication totals are not necessarily the most accurate reflection of patent behavior by cannabis businesses. Therefore, it is useful to examine filing and provisional trends for recreational patents. These results are subject to the same 18-month delay problems noted above, and therefore actual and projected values are provided. Using actual filing data for 2017, there has been a 181% increase in filing activity since 2012. Using projected filing data for 2019, there has been a 257% increase in recreational filing activity since 2012. Using actual priority claims for 2017, there has been a 196% increase in provisional filing activity since 2012. Using projected priority claims for 2019, there has been a 289% increase in recreational provisional filing activity since 2012. The following charts demonstrate recreational filing trends from 2012 to 2019.

Patents that could be classified as recreational made up approximately 53% of all filings between 2000 and 2011. However, following legalization the percent of patents and applications considered recreational has increased to approximately 77% of filings in 2018. The chart below demonstrates the growth of the recreational sector’s share of cannabis patent activity.

Conclusion

In conclusion, the data provide clear evidence that cannabis patent activity has increased over the last decade. Further, patents associated with the recreational and medicinal sectors of the cannabis industry appear to be increasing at an even greater rate.

Further Developments to Watch

The trends demonstrated in the data suggest that cannabis patent activity will continue to increase in 2020 and beyond. This is further expected due to continued legalization efforts. It remains to be seen whether the federal legalization of industrial hemp and implementation of USDA plans will result in the recreational sector’s share of patent activity decreasing, as activity becomes focused on industrial hemp related patents.

An additional area that merits investigation is the issuance rate of cannabis patents. A rudimentary estimate comparing the number of filings to the number of issued patents for 2012-2019 yields an issue rate of approximately 49.6%. Assuming an average time to issuance of 2.5 years, comparing the total filings from 2012-2017 with the total issued patents from 2012-2019 yields an issue rate of approximately 64%. Comparing the total filings from 2012-2017 with the total issued patents from 2014-2019 yields an issue rate of approximately 52%. The issue rates for recreational patents over the same timeframes are similar. However, given the wide variance in time between filing and issuance, the above rates are only speculative. There has been concern that cannabis patents are issued at a higher rate due to the lack of prior art in the field which examiners can cite against the issuance of a patent. The issuance rates noted above do not seem to lend much support to this concern, as the USPTO claims its overall issuance rate is roughly 68%.

Other concerns have been raised about the strength and usefulness of cannabis patents. It is currently unclear how many issued patents are strong enough to survive challenges of invalidity in either post-grant USPTO proceedings or litigation. Currently, only one major cannabis patent is in litigation.[1] As of this writing, the court appears to be treating the case as any other patent infringement suit.[2] However, industry participants will surely watch the case and its outcome may affect the perceived value of cannabis patents and subsequently alter patent activity.

About the Author

Ian Johnson is a registered patent agent with Plant & Planet Law Firm He works with clients to obtain patents and other protection for their intellectual property and assists clients in licensing, acquisitions, and sales of valuable business assets. He also draws on his experience as an entrepreneur and his broad background across technology, business, and law to support Plant & Planet Law Firm in providing holistic solutions on matters related to business entity formation, corporate governance, and investor relationships. Ian holds a Bachelor of Science in Engineering with a concentration in acoustics from Purdue University. He anticipates receiving his J.D. from the University of Florida Fredric G. Levin College of Law in May 2020. He can be reached at ijohnson@pnplf.com.

Plant & Planet Law Firm was founded with a mission to provide legal services to clients whose research, technologies, products, innovations and businesses make the world a better place. The firm leverages its professionals’ variety of legal and technical backgrounds to provide clients solutions in the areas of intellectual property, business law, international law and commerce, and more. The firm is proud of its involvement in the emerging legal cannabis industry, and is also heavily involved in the agriculture, water, clean energy, life sciences, and medicine industries. Plant & Planet is a trusted home for inventors, entrepreneurs, and companies looking to improve the world. All the firm’s activities are tied to its mission statement: “Our clients make the planet better.”

[1] United Cannabis Corp. v. Pure Hemp Collective Inc., No. 1:18-CV-01922 (D. Colorado filed July 30, 2018).

[2] United Cannabis Corp. v. Pure Hemp Collective Inc., No. 18-CV-1922-WJM-NYW, 2019 WL 1651846 (D. Colo. Apr. 17, 2019) (Order Denying Defendant’s Early Motion for Partial Summary Judgment). Discovery in the case is ongoing at the time of this report.

DISCLAIMER: This report is for informational purposes only and does not constitute legal advice. No attorney-client relationship is created by this report. Neither the author nor Plant & Planet Law Firm will be liable for any harm arising from actions taken in reliance on any information herein.

January 20, 2020/1 Comment/by Dale Hunt

Let’s Talk About Reproduction and How You Will Get Paid

Genetics, Grow Your Business, Hemp, Marketing, Patenting - Novelty, Plant Patents, Plant Propagation, Utility Patents

HOW’S THAT FOR A TITLE? YOU’D BETTER READ ON

Hubbub Is a Word and It Happened This Week

I always get the best blog ideas from questions that come up during the week, and this week was no exception. A friend of mine whom I haven’t yet met in person (interesting times, these) brought to my attention some controversy on social media about a plant patent and asked me a series of great questions about the patent itself and the hubbub around it. (I’m surprised my spellcheck didn’t go nuts just now, but apparently hubbub is a word.)

The crux of it was this: There was a plant patent posted somewhere on social media and certain portions of the description were highlighted. One portion described that the new cultivar was made from an open cross between two traditional varieties. Another highlighted portion pointed to some phenotypic features of this new variety that could apply broadly to a huge number of other varieties as well.

When you look at a plant patent, you’ll typically see several pages of detailed botanical description like “Stem morphology.—Rugose — longitudinal ribs with corky lenticels on older portions.” Or you might see curious botanical terminology like “hirsute peduncle.” And, after you google “hirsute peduncle” to see if that’s even real (it is) and what it looks like (it’s not as weird as it sounds), you will still be left wondering how it helps protect this particular cultivar or distinguish it from others.

Plant Patents Got People Worked Up

People seemed concerned that — although plant patents are supposed to only cover clones — the written description was so broad it could cover much more than just the clones of this one variety. Could it also cover their plants and, therefore, be an over-reach? Is this the next bad patent that is going to cause trouble for the industry? Or, on the other hand, if this patent really ONLY covers clones, what is the point of even getting a plant patent when Cannabis is often propagated by seeds AND clones?

These are common questions and they deserve some respectful discussion. The fact that these questions come up a lot reveals that this topic needs to be explained in better ways and in more detail. I hope this helps.

Let’s start with some historical background. The original Plant Patent Act was passed in 1930 and updated in 1952, long before there was any DNA testing. So it required (and still does) a description “as complete as is reasonably possible.” For this reason plant patents go into all kinds of detail describing the plant botanically, providing pictures, describing how the cross was made, describing the closest known varieties, etc.

Ignore That Hirsute Peduncle

What you need to know is this: NONE OF THIS DESCRIPTION MATTERS when it comes to infringement. Everybody knows — especially with plants like Cannabis — that phenotype and especially chemotype can be highly variable based on where and how the plant is grown. They also know that a lot of plants that are not genetically the same can be very similar in appearance.

When it’s time to prove infringement, DNA tests will be done and the plants will have to be genetically identical or there will be no infringement. Not similar; identical. Plant patents strictly and narrowly only cover clones of a single variety, where that variety was originally created by a sexual cross or a mutation — a single genotype with no equivalents or near-misses. So everybody can take a deep breath and ignore what’s in the detailed description; it’s only there because the statute requires it.

Interestingly, you don’t need any DNA information when you file a plant patent (another historical legacy of when the statute was written); but that’s OK, because that sequence isn’t changing — it will be there ready for its day in court when you need it. You may have other reasons to lock in the record of your DNA information and your proof of ownership now, but you won’t need it to get a plant patent application filed or allowed.

But Please DO Focus on This

Now that we’ve covered what to ignore, let’s talk about what to focus on. I’m going to start with a short list of the most important things you should know about plant IP in the US.

First determine whether you are looking at (or talking about) a Plant Patent, a Utility Patent, or a USDA PVP Registration. They are very different kinds of protection and don’t necessarily all make sense for the same kind of business.

The easiest way to do this is to look at the number on the first page, upper right corner. If it has PP followed by five digits, it’s a Plant Patent. If it has seven or eight digits, it’s a Utility Patent. If the number starts with a string of digits that looks like a year, it’s either a published patent application or a USDA PVP Registration. That will be easy to tell based upon which agency published the document.

Now that you know what you’re looking at, it’s time to know (or remember) what kinds of rights it grants.

Like a Copyright – Meaning It’s about Direct Copying

A Plant Patent is very much like a copyright on a single cultivar – it protects ONLY clonal copying of the exact genotype of the claimed cultivar. Note that this is NOT defined by the chemotype. Chemotypes can vary depending on how the plant is cultivated, but genotypes remain constant. Plants are like us in this way — we might be thin in the summer and chunky after all the holiday meals, but we have exactly the same genes all year long.

A Plant as An Invention – Protecting an “Idea” Several Different Ways

A Utility Patent treats a plant (or anything) as an invention. You can claim pretty much anything you can put into words if you can convince the patent examiner that what you have claimed is (i) new; (ii) not obvious; (iii) adequately described; and (iv) “patentable subject matter” (which means, among other things, not something already existing as an unmodified product of nature).

This flexibility in claiming matters a lot, especially with a plant like Cannabis that can be reproduced with clones and seeds and that can be commercialized as flower and extracts, as well as the clones and seeds themselves. This is because, in a utility patent, you can claim more than just the clones of one genotype. You can at least try to claim things like*:

1. 1. Plants having the same genotype as the seeds or tissue on deposit as accession #ABC at XYZ depository.
  2. Progeny of the plants of claim 1, or any part of said progeny.
  3. Seeds of the plants of claims 1 or 2, and progeny thereof, and any part of said progeny.
  4. Harvested material or extracts from any parts of the plants or seeds of any of claims 1-3.
  5. A medicinal or recreational product made from any of claims 1-4.
  6. A vape cartridge containing an ingredient from claims 4 or 5.
  7. A method of making a medicinal or recreational product by providing a material from any of claims 1-4, performing at least one processing step on the material, and obtaining a product.

*These are simplified – this is a blog rather than a law school course

Seed Rights – With Important Exemptions

A USDA PVP Registration

- - protects seeds* from being “copied” in bulk to compete with the owner of the variety
  - but expressly permits use of the seeds for breeding to make other new varieties (this is called the “Breeder’s Exemption“)
  - and also expressly permits a purchaser of protected seeds to keep enough seeds to replant the same acreage as the seeds he/she originally purchased for planting (this is called the “Farmer’s Exemption“).

*USDA has recently expanded PVP to cover non-seed varieties, but that is beyond the scope of this post.

It’s All About How You Plan to Get Paid

The reason that it’s so very important to understand the differences among these three kinds of protections is that some of them MAKE NO SENSE and have ALMOST NO VALUE, depending upon your business model. In other words, going back to the (hopefully) provocative title of this blog:

Let’s talk about reproduction/propagation and how you will get paid.

If you are selling seeds, and only selling seeds, would it make any sense to spend your money on a plant patent? Almost certainly no, if your IP funds are limited. The only reason I could think of to still file a plant patent is if the cultivar that is the source of the seeds you want to sell is, itself, so valuable that you would want to control its propagation, behind the scenes. In that scenario, the plant patent would be insurance against theft of the propagating material of that “seed parent” cultivar. That plant patent would certainly give you good legal recourse against anyone who showed up in possession of plants of that genotype later on, since that exact genotype would never come from the seeds you are selling. But a plant patent would not directly fit or support the seed business itself at all.

So what kind of protection would make sense if you are selling seeds? Well, it really depends on what the seeds are for. The first question you’d ask today is whether the seeds are for industrial hemp because, if they are not, your only option in the US is a utility patent. USDA PVP registrations are available for industrial hemp, but still not for higher-THC Cannabis (over 0.3% THC).

If you are selling clones… well, you REALLY NEED a plant patent, but you also need more than that. Let’s talk about what your business is about. Are you selling clones to nurseries who will propagate and sell more clones to other people? Then you need a plant patent AND a license agreement with that nursery requiring them to pay you for every clone they make and sell.

There are other ways to do this, but you can’t just rely on a patent and you really can’t sustainably be in the clone business without a plant patent AND some meaningful, well-crafted license agreements. Get professional help. I know a guy.

If you are only selling harvested flower or extracts and you do all your own farming and you are super careful with every last bit of your propagating material, then you could get by without any IP protection. In that case, if you chose to get IP protection if would be a form of insurance. You could have plant patents to protect your genetics in case someone were to take a cutting and start competing with you.

And if you wanted to be extra careful, you could get a utility patent to claim the same genetic line more broadly. This IP approach would be all about having recourse if your efforts to control the physical material were to spring a leak somewhere. We all know this can happen, which is exactly what insurance is for.

Think it Through – Make a Plan – Get Help

There are many variations on these three main approaches to reproduction and getting paid. Whatever your business model, there will be an IP approach that can help protect what you’re trying to do; and there are others that could be pointless. There is definitely not a one-size-fits-all solution in plant IP, especially with a plant like Cannabis that can be propagated via seeds or clones and that can be commercialized as anything from industrial hemp to craft marijuana to pharmaceutical-grade cannabinoids to who knows what else?

So think about YOUR business model and be careful with YOUR genetics and then — when you need some help putting it all together — get some help. Like I said, I know a guy.

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.

June 5, 2019/2 Comments/by Dale Hunt

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

Genetics, Hemp, Marketing, Patenting - Novelty, PBR, Plant Breeding, Plant Patents, Utility Patents

Passage of the 2018 Farm Bill has changed the dynamics of the industrial hemp industry in the US and – probably by extension – worldwide. If you are a hemp breeder or run a seed company and are developing some unique genetics, you may be wondering how you can best structure a nationwide or international business based on selling seeds when the very seeds you sell are capable of undercutting the value of the unique genetics the seeds contain by being reproduced and re-sold in large quantities.

This is where intellectual property rights matter. Without IP rights, every seed-propagated variety would quickly and inevitably become nothing more than a commodity on the open market; it is only by maintaining some type of control over the right to produce and sell the seed that you can recoup the value of your significant efforts to develop the variety in the first place.

You may have heard of plant patents. Unfortunately, US plant patents are only available for asexually-propagated cultivars of plants; so, seed-propagated industrial hemp is not eligible for US plant patent protection. Fortunately, in the US there are two other IP systems that are available for protecting seed-propagated plant varieties:

USDA Plant Variety Protection: this is generally the most inexpensive and direct approach to IP protection, but it is not available for all genera of plants; and
US Utility Patent Protection: another form of protection available which, when handled properly, need not be unduly expensive, complicated, or over-reaching.

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:

The hemp cultivar known as XYZ, deposited under accession number ABC.
Seed, plants, plant material, plant extracts, or a whole plant of claim 1, or of any progeny thereof.
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:

an invention must be new and non-obvious;

the application must adequately describe the invention; and

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.

January 14, 2019/0 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.

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.

December 19, 2018/0 Comments/by Dale Hunt

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