Plant Patents Archives - Page 2 of 4

Protection for Your Genetics That Is Free* and Never Expires** (Read the Fine Print)

Genetics, Grow Your Business, Plant Patents, Plant Propagation, Public Domain

AN ALTERNATIVE OR ENHANCEMENT TO YOUR PATENT STRATEGY

Ask A Lawyer a Question and This is What You Get

I was asked recently about whether it is true that, if you never sell your plants, you can renew your patent or your patent never expires. My answer was that like a lot of things people ask lawyers — there is a short answer and a longer, more detailed explanation and, of course, I’ll give both.

Short answer: No, it’s not literally true but, in practical terms, it could seem like it is.

Whaaaat???

That is what long answers are for.

Long answer: Patents always expire, and courts and policymakers really hate it when patent owners try to get tricky and get around patent expiration. So don’t go there. HOWEVER, your right to ownership and control of what is rightfully yours without having it stolen from you doesn’t expire, and that is where the answer circles back to the way the question was asked. So I’ll paraphrase it now to put the concept into the right context.

Q: If you never sell your plants, will your right to control what happens to them outlast the expiration of your patent on the plants?

A: Yes, of course.

Common Sense

And you’re realizing that’s common sense; you don’t need an expensive lawyer to answer that. But you will definitely need a carefully crafted business strategy and commercial operation to put it into action. If you think this sounds difficult, you’re right. However, for some valuable cultivars it’s very much worth the trouble, because their value persists long after the patent expires; and in other situations it’s worth considering as an alternative to ever even filing for IP rights.

Patents always expire at the end of their set term, allowing, of course, for whatever term-extension may have been granted, if any. There’s no getting around that. But the patent is only an enforceable right against an infringer who illicitly propagates the cultivar, which requires possession of the plant or some propagating material in the first place.

A Growing Business Practice

This idea of trying to create some kind of post-patent-term exclusivity is actually a business practice that is becoming more widespread in ag sectors where money is made from selling harvested material (like fruits or flowers), rather than selling whole plants. The practice is to exercise (where possible) very strict exclusive control of important cultivars. The practice must, however, be exceedingly strict — essentially perfect — at least, in theory, never losing control of any propagating material (even pruning material). Under that practice, there is never any third party — anywhere in the world — who can claim legitimate ownership of even one plant of the cultivar in question.

Thus, when any patents expire (which they still will), the owner of the rights to the cultivar still has other legal causes of action (right to sue) against anyone else who tries to commercialize the cultivar, because the owner can still claim misappropriation of tangible personal property (i.e., theft). The challenge, of course, is that anyone who can show that they had legitimate access to the propagating material after the expiration of the patent term has a complete defense.

The Fallen Prunings Case

This actually happened to a fruit company in California. Someone was growing one of their proprietary grape cultivars without permission and the two parties ended up in litigation over it. The patent on the cultivar had expired. The plaintiff argued that they had never sold any plants, so the defendant must have stolen the plants they were growing, or at least the propagating material from which those plants had originated.

The defendant said emphatically that they did not steal anything. Their defense was that they had driven behind the plaintiff’s truck on a public road after a pruning and picked up some plant material that fell off the truck, took it back to their farm, and propagated it. The court found that the material which fell off the truck on the public road was in the public domain — essentially trash — and it was not theft for the other party to recover and propagate the plant material. This should have been on TV, but it wasn’t.

What does this all mean? Well, in the stolen grapevine case, the defendant would have been in trouble if they hadn’t had the public-domain defense because, otherwise, the plaintiff had a good case. The fact that the patent had expired wasn’t the main question. The main question the court was interested in was whether there was really any stolen property. And because the defendant had an apparently plausible story that didn’t amount to theft, case closed.

Multiple Forms of Protection or Recourse

So, back to the question I was asked: What is the relationship between never selling your plants and the expiration of plant patents? My answer: there’s no direct relationship; however, if you never sell your plants, any patents you get to protect them are less important. IP coverage fades from being your main protection to being just one more way to go after someone if your plants or propagating materials fall into the wrong hands. In such a situation, you could decide whether to sue for patent infringement, or theft, or both. And then, even after the patent has expired, suing for theft would still be an option.

Does this sound overbearing and hyper-aggressive? I hope not. I don’t believe in suing people frivolously or as a first option. But if you don’t have some form of recourse against people who will come in and literally steal your property, you can’t stay in business, provide jobs for your employees, and put your products out there for people to enjoy. So it IS important to be able to use IP and other forms of recourse to protect against competitors who would choose illegal ways of competing with you. And if you never sell your plants, they are still YOUR plants — YOUR special genetics. Period. (Wow, I guess I needed to say that!)

The Fine Print

Obviously, this strategy only works in some industries — those that make their money from selling harvested material, rather than from selling whole plants. So, if you’re in the business of selling fruits or flowers, great. If you’re selling whole plants, this approach doesn’t help you. And, even if you’re in the business of selling fruits or flowers, it can require some very strict business and agricultural practices to make sure that neither a single plant nor a single propagatable pruning discard ends up in the public domain, such as the trash.

For those who can’t afford to protect their cultivars, this approach is obviously better than nothing; but it only works if 1) it is taken seriously; 2) no plants are sold; and 3) the propagating material is very carefully policed from theft.

Hopefully this is helpful to someone who was wondering about alternatives to filing a patent application or who had heard the not-literally-correct rumor that inspired this article. If you ask a lawyer a simple question, watch out — you might get a short answer AND a long answer.

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.

May 16, 2019/2 Comments/by Dale Hunt

NONE: That’s How Much DNA Sequence You Need to Submit A Plant Patent Application

Genetics, Grow Your Business, News, Plant Breeding, Plant Patents, Utility Patents

THE PHYLOS FIASCO WAS A WAKE-UP CALL TO BREEDERS

DNA Is Not Required For Patenting — Never Has Been

In the wake of the Phylos controversy, many are wondering about the need for DNA sequence information in patents. That’s a complicated question in some ways, because the answer has some layers and explanations to it. But, in another way, it’s a very simple question. So let’s start with simple: how much DNA sequence information is really required for a plant patent application? NONE. ZERO.

Don’t believe me? I have filed hundreds of plant patents in the United States — at least hundreds — and extending that to the corresponding international plant breeders’ rights applications, I have filed thousands. NONE of them required any DNA sequence information; all of them were allowed without any.

There is a historical reason for this, of course. The legal systems that were created for granting intellectual property for plant cultivars came long before DNA sequence information was even an option. Under those systems,

the way a new plant cultivar was identified and established as new was — and still is — a combination of

(a) describing how the cultivar was made (hybridization crossing followed by selection, or mutagenesis, or identification of a mutant or sport among some cultivated plants, for example);

(b) describing the botanical features of the new cultivar, especially those that make it most distinguishable from the closest known cultivars; and

How Did This Happen, and What Now?

So, to this day, it is routinely possible to file and obtain allowance of a plant patent or international plant breeder’s right registration without any DNA information. But the Cannabis community has become accustomed to submitting samples for DNA analysis, either to Phylos or someone else. Why is that? It may be a combination of a few things:

good marketing by Phylos;
a general curiosity about where each strain* of Cannabis fits in relation to every other strain, which curiosity was very well-aligned with Phylos’ marketing;
a misunderstanding that DNA sequence information does not provide any kind of intellectual property protection; and
a misunderstanding about the availability and relative simplicity of genuine patent protection for many of the strains that were submitted for DNA testing.

This blog is not intended to discourage anyone from getting DNA information; it is relatively inexpensive and can be quite useful. However, it does not — by itself — provide any kind of intellectual property protection. Meanwhile, filing for IP protection in the form of a plant patent or a utility patent does provide protection and does not necessarily require any DNA sequence information.

The Easiest Comparison Ever

Another reason to weigh the relative importance of IP protection versus DNA sequencing is, perhaps, best posed via the following thought problem:

Suppose I put “Patent Rights” behind one door and “DNA Sequence” information behind another door. Without any special education on your part (just based on what you already know from living in the world, hearing the news, watching TV and movies, etc.) see if you know the answer to this:

Behind Door #1 is something that you can lose if you don’t act within a limited window of time and that will expire within about 20 years never to be recovered but that, if you handle it correctly, can have tremendous value to you or your business.

Behind Door #2 is something that will never significantly change. You couldn’t change it if you tried. You couldn’t hide it if you tried. If someone is good enough at their techniques, they could detect it and reveal it 10,000 years from now from a single seed found inside the frozen stomach of a mountain climber caught in an avalanche.

OK, which one refers to patent rights, and which one refers to DNA sequence? Which one should you be quick and careful about protecting first, and which one will still be there when you need to prove in court that someone stole your genetics? Easy, right?

Is DNA Information Worthless? No — It’s Great

So why, if you can afford both, should you still get the DNA sequence? Does it add any value to your patent application or to your business strategy? Absolutely. That’s why at the beginning of this post I said the answer was both complicated and simple. The simple was that you definitely don’t need it. The complicated is that there is more to it than that.

Even though the DNA sequence will always be there and will always be the same, it’s nice to be able to show — right from the start — that it’s yours and that it corresponds to the plant cultivar (the strain) that you are patenting. And with Cannabis, unlike with some kinds of plants people patent, it may be that the botanical description doesn’t easily distinguish one cultivar from other similar cultivars. So, DNA differences — if they are known and can be pointed out — can help simplify the patenting process.

Depending on the situation, the DNA information — while absolutely not required — could streamline the examination and make it easier.
In addition, having in the record in a patent file certain DNA “markers” most likely to be used in a test could simplify the process of enforcing the patent when it becomes necessary to stop an infringing plant cultivar from being imported or sold. If a quick test could show that the infringing plant had all of the same markers as displayed in the patent itself, this could be persuasive to customs officials, for example. So, while this would never be required for patentability, it could be highly convenient for a patent owner.

Make Educated Choices if You Have to Choose

These are just a few examples of why I would never discourage a client from getting DNA information if it would not delay their moving forward with patenting their valuable Cannabis cultivars or other plant cultivars. But if you have any valuable plant genetics and you are deciding whether it is more important to get a DNA analysis or pursue IP protection, go back and think about Door #1 and Door #2. The entire Cannabis breeder community seems to have gotten caught up in a mythology about the benefits of DNA sequence information and the evils or unavailability of patents, and this has been very much to their detriment. Plant breeders need to start protecting themselves and their strains now.

Making Decisions – Ballpark Budgets

Of course, every breeder has to make hard decisions about budgets — when and how much money to spend on protecting a strain. Here are some suggestions about how to do that:

If you think you have something special that will have commercial value for more than just a few seasons, the most important thing to do is to not release the genetics (seeds OR clones) to anyone before you file for patent protection.
Your cheapest option for patent filing is a provisional patent application which will only cover you for the first year. After that first year, you will need to decide whether you’re going to go forward with a “real” patent application and what kind. But a provisional application has the lowest filing fees and keeps your options open to file either a plant patent application or a utility patent application or both. Here is an article about what plant patents cover, and this is an article about what utility patents on plants cover.
It is hard to be precise about budgets, but some ballparks to help you make decisions are as follows:

Less than $1,000 – the best option is to keep personal control over the propagating material, only ever sell flower, and spend the “protection budget” on DNA sequencing.
Less than $5,000 – the best option may be to self-file a plant patent. Check plantlaw.com where we will soon be posting forms enabling you to self-file a Cannabis provisional patent application and providing instructions for self-filing a plant patent.
Less than $10,000 – the best option is to file a plant patent through an attorney. Start with a provisional because (a) it gives you a year to assess the market acceptance of your strain; (b) it delays your costs; and (c) gives you an extra year of patent term.
More than $10,000 – the best option is to file both a plant patent and a utility patent through an attorney. The cost will definitely exceed $10,000 but will be spread over two or more years as the applications progress through the Patent Office. You can also pursue International Protection if desired.

Look for another post soon with more information on filing options. For now, focus on today’s message. It’s time to rethink the relationship between DNA and patents covering plants.

*strain – The Cannabis community has a fascinating relationship with the word “strain” which is even more nuanced than I acknowledge in this blog. But it might be worth reading anyway.

May 7, 2019/3 Comments/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

February 1, 2019/4 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

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