Patenting - Novelty Archives - Page 3 of 3

Perhaps you read the blog post about copyrighting a plant variety (via a patent) and thought, “If only that were enough.” Some kinds of plants cannot be propagated by cloning on a commercial scale. And there are some sets of traits that can be easily transferred by seed propagation, or transferred to other lines with one or more straightforward crosses. So in these cases, a form of protection that only prohibits direct copying just can’t fully protect what is special about the cultivar. In other words, a plant patent isn’t enough. This is because US plant patents only cover asexual propagation – direct cloning of the original plant. If the commercial value can be derived without cloning, then a plant patent won’t protect the main commercial value.

Fortunately, there are two approaches to filling this gap in protection:

USDA Plant Variety Protection is generally the most inexpensive and direct but is not available for all genera of plants.
US Utility Patent Protection is also available and, when handled properly, need not be unduly expensive, complicated, or over-reaching.

USDA Plant Variety Protection

When seed-propagated plant cultivars need to be protected, the available form of protection in the US is a USDA Plant Variety Protection (PVP) Certificate. The application process is relatively straightforward – it requires

making a seed deposit and filling out some forms asking questions about the genealogy and selection of the cultivar, its commercialization, traits, and other relevant information.

Examination, known as “DUS Testing,” is done 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.

The Cannabis problem and the solution: There is a problem if you’re a Cannabis breeder. While the USPTO is happy to examine applications and grant patents covering Cannabis varieties or other Cannabis-related inventions (go to MJPatentsWeekly.com to see them all), the USDA is currently not allowed to accept seed deposits of any kind of Cannabis, whether hemp or psychotropic species/hybrids/cultivars. Therefore, if you are trying to protect a seed-propagated Cannabis cultivar, the USDA PVP approach is not available. It will be available once legislation is passed authorizing the USDA to accept Cannabis seed deposits; however, until then, Cannabis breeders whose varieties cannot be adequately protected with a plant patent really only have one choice – to pursue broader protection with a US utility patent.

If you need to protect against both sexual and asexual propagation of a valuable cultivar, your only choice in the US, for now, is to obtain a utility patent. The good news is that a cultivar-specific utility patent does not need to have all of the negatives that are often associated with utility patents in the minds of many plant breeders and members of the long-term Cannabis community. What are those negatives?

High cost,
extreme complications in the preparation/disclosure process, and
patent claims so broad that 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 is being sought can also greatly control the cost and complexity of the process.

If the goal is to adequately protect a single cultivar or small group of varieties 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, such as

The Cannabis 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 2 with another Cannabis 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
the application must adequately describe the invention and
enable the public to make and use it once the patent has expired.

The requirement for novelty (1.) would come from 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.

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 the rest of the world, someone facing the breeding situation described at the beginning of this article would still go to one plant-variety office to file one type of application for plant-breeders’ rights. In some countries, the breeder may also be able to apply for a utility patent. However, in the US – and particularly for Cannabis breeders – there are more things to consider.

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.

“So how can I know if the cultivar I bred is really new and distinct enough for patenting, because I heard it’s required for a cultivar to be ‘new and distinct’ in order to be patentable?”

Here’s my answer: It is new and distinct by definition. What does that mean? Let me answer with an example. When someone says, “I saw your twin the other day,” do you ever think, “Wow maybe that’s true — maybe I have an actual twin wandering around somewhere in the world, born to different parents.” No, you know that’s impossible, and you never even studied genetics — or maybe you did, but you don’t have to study genetics to know that’s impossible.

You already know that every person is different — even you and your siblings are different, and you all came from the same parents. You know from experience (and it happens to be true statistically) that every single individual from a sexual cross is different from every other individual. So to reiterate: if you bred it, your cultivar is new and distinct enough for patenting, by definition.

If you make a cross and you select a new cultivar, it is genuinely new and distinct. The real question is different. The real question is whether it is worth patenting. And to answer that question

you need to do some study of it to determine whether it is commercially viable. For more on that click here.

Briefly, you need to know that the cultivar is genetically stable enough to be substantially uniform under asexual propagation among numerous clones in a generation and across numerous generations. And then, also for patenting purposes, you need to be able to find a way to actually describe how it is different both from its parents and from the closest known cultivar. It doesn’t have to be different in appearance, but you have to be able to put your finger on some difference — maybe the difference is biochemical; maybe the difference is in terms of performance.

So, if you’re breeding Cannabis, the difference might be terpene profile, or it might be a THC:CBD ratio, or it might be about how sensitive it is to day-length or insects or mold or something — but you do have to be able to provide some way of distinguishing it from other known cultivars. But that’s not to prove that it is different; that’s to be able to do the statutorily required job of describing it well.

Traditionally, people meet the requirements of describing the cultivar by providing a thoroughly exhaustive botanical description of the morphology of the plant. That is because, typically, the differences that matter between a new cultivar and the closest cultivars to it are morphological. But sometimes the differences that matter are performance-related differences, instead of morphological — such as the time of ripening or the sweetness of the fruit.

But, if you’re working with a plant that doesn’t display so much morphological diversity as biochemical diversity — and it’s the biochemical diversity that really matters — then you will meet the statutory requirement of describing the plant well by describing what you can about the morphological differences, if any, and then describing the biochemical differences.

You may actually decide to also submit DNA information, but that is not a standard requirement and may well be an expense you can avoid. It never hurts to have DNA information as part of your application, and it’s great to be able to correlate a DNA sequence with the variety back to when you first filed the application, but this will NOT be required unless the only way to distinguish your variety from those most like it is to point to differences in the DNA sequence.

It really is the case that the appropriate requirements for a plant patent description under US plant patent practice are very different from one plant species to the next. And that also applies to practice under the International Union for the Protection of New Varieties of Plants (‘UPOV’), although the approach is different, because that is a form-driven approach. In contrast to the detailed botanical description required in a US plant patent application, a UPOV application largely involves supplying information about the plant cultivar in a form that is tailored to the type of plant that is the subject of the registration.

So to return to the original question: “How can I know that my cultivar is new and distinct?” Now you know that’s an easy question to answer. And the harder questions are:

Is it distinct enough to make it worth patenting?
Is it uniform and stable enough to make it commercially viable?
Can you describe its distinctness well enough to meet the requirements for patentability?

And isn’t that just like a lawyer, answering a question with more questions?

What Should I Do When a US Plant Patent Isn’t Enough?

How Can I Know If My Cultivar Is New and Distinct for Patenting Purposes?

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