Plant Propagation Archives - Page 2 of 2

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

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

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

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

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

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

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

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

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

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

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

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

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

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

By Dale Hunt – The opinions expressed here are the author’s own and do not necessarily reflect those of his professional colleagues or his clients. Nothing in this post should be construed as legal advice. Meaningful legal advice can only be provided by taking into consideration specific facts in view of the relevant law.

December 19, 2018/0 Comments/by Dale Hunt

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

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

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

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

In addition

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

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

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

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

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

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

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

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

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

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

By Dale Hunt – The opinions expressed here are the author’s own and do not necessarily reflect those of his professional colleagues or his clients. Nothing in this post should be construed as legal advice. Meaningful legal advice can only be provided by taking into consideration specific facts in view of the relevant law.

December 7, 2018/4 Comments/by Dale Hunt

Protecting Your Cannabis Genetics in Canada and Internationally

Genetics, Grow Your Business, International Commerce, Naming, PBR, Plant Breeding, Plant Propagation, Trademarks, UPOV

Since I live and work in the US, my blog is obviously US-centric. However, I have helped plant breeders in many different countries obtain IP protection for their cultivars all over the world. In the US, protection for plant cultivars can be in the form of plant patents, utility patents, and/or USDA PVP registrations. In the rest of the world, the IP protection is more uniform, and is generally referred to as Plant Breeders’ Rights (PBR) or, less commonly, Plant Variety Rights (PVR).

Plant Breeders’ Rights through UPOV in Nearly 100 Countries

In almost all countries where such rights are available, they arise under a mostly-standardized system known as UPOV (Union internationale pour la protection des obtentions végétales, or International Union for Protection of New Varieties of Plants). There are currently 75 members of UPOV, most of which are individual countries but some of which are groups of countries — like the European Union (28 member states) and the African Intellectual Property Organization (17 member states). Most of the EU countries are also separately members of UPOV, so the total number of countries that participate in UPOV — individually and/or through a regional authority — is currently 94. You can check the current membership of UPOV here.

This post is primarily for Cannabis breeders and mainly for Canadian breeders who are interested in protecting their

genetics that may include some cultivars that are seed-propagated and some that are clonally propagated. However, what is covered here should be informative for anyone interested in PBR, so don’t click away just yet.

Seeds and Clones – The Difference Matters

While the approaches for seed-propagated and asexually-propagated cultivars are very different in the US, they are not nearly as different in other UPOV countries, including in Canada. However, there are still some important differences in the requirements, cost, and planning required for making successful applications, especially foreign applications (anywhere you’re not! — you’ll see what I mean if you keep reading). So please be aware that you cannot treat your seed-cultivars the same as your clones when applying for PBR.

What are the differences and why do they matter so much? The main difference is that almost all UPOV countries require a so-called D-U-S test which requires viable plant material in the country where you are applying for the rights. DUS testing examines the cultivar’s Distinctness from other known varieties*, Uniformity of plants within the cultivar, and Stability of the cultivar’s traits from one generation to the next. (*If you’re curious about why I used the term “varieties” in one place and “cultivar” everywhere else in this paragraph, you may be geeky enough to enjoy this post.)

You Can’t Just Put a Few Dozen Clones in an Envelope

Since live plants must be examined, this is where the difference between seed-propagated and clonally-propagated plants becomes so important for applications outside your “home” country. Compared with living cuttings of a cloned parent line, seeds are obviously much easier to sterilize and ship while still viable, certify as being phytosanitary, and maintain dormant prior to testing. Such cloned cuttings are often referred to as “witness plants.” Usually, numerous live witness plants must be phytosanitary-certified (if they are to be exported), shipped, received, and test-grown in each country where a PBR application is filed. Clearly, this requires more planning and expense than preparing and sending seeds.

A few PBR systems require direct submission of the witness plants to the PBR office itself. Most, instead, require the applicant to certify that the plants

have duly arrived in the country by a given deadline, with proper phytosanitary certification;
have cleared any required quarantines;
are under the care of a designated nursery at a specified location; and
are available for inspection by the PBR authority upon request (or some variation on that general set of requirements).

There are even a few countries that will waive any requirement of local witness plants in lieu of certified DUS tests from another UPOV member country whose testing standards it recognizes as being trustworthy.

I will provide another, more-detailed post with some rookie mistakes, horror stories, lessons learned, etc., on adventures with clonally-propagated witness plants around the world. Having “ridden herd” on thousands of witness plants making their way to dozens of countries over a couple of decades, I think I’ll be able to come up with some DO and DON’T material. In the meantime, though, on to the rest of the PBR process:

For seed-propagated cultivars, in many countries the seed deposit you will be required to make is simply held in reserve by the PBR office, and you are still required to provide a place where plants grown from another batch of your seeds will be examined. So, in this way, the seed-grown plants are essentially the same as the witness plants discussed above — they are just a lot easier to get to the right place and get started growing, especially if they are crossing international borders and long distances and, perhaps, waiting until the next growing season to be tested.

The Forms – Not Too Bad, But Watch the International Details

For the most part, a PBR application is a series of forms. There are some general questions about the applicant, the applicant’s representative, the botanical name of the variety, the denomination (variety name), the breeder, prior commercial activity involving the variety, the origin and breeding history and ancestry of the variety, a statement about the uniformity and stability, and a statement about the distinctness from other known varieties. Depending on the species, there also can be much more detailed descriptive forms that ask about certain morphological or functional characteristics that are important or useful in distinguishing among members of a given species.

There can be some major hiccups at the form stage — serious problems with providing the right documents to establish that the applicant has the proper authority to apply for the rights. This can happen especially if there is an earlier application in another country that is providing a priority date for the later application. Without going into too much detail, there are many international documentation hoops that one must jump through, in some countries, to get this part of the process out of the way; some things are similar from country-to-country, and some things are unique in each country. It can be a serious headache if you haven’t handled it before, so I definitely recommend experienced, professional help for this part of the process.

Provisional Acceptance, Public Comment, and Examination

Once the forms are filled out, reviewed, accepted as being complete, and the deposit of seeds or plant material is received and verified, the application is “provisionally accepted,” published, and moves on to examination. In Canada, the details of the application are published in the quarterly Plant Varieties Journal. An application cannot be eligible for grant until at least six months after it was published, thus giving the public six months to object to anything in the published application.

DUS testing usually begins after the application formalities are complete and the application is published. For DUS testing, an examiner may choose to make one or multiple visits to the designated site where the seeds have been planted or the witness plants are being grown. In any case, the examiner will examine the plants in detail to compare them with reference varieties (to verify distinctness) and will examine individuals within a population of plants of the cultivar, to verify their uniformity. The examiner will also assess the stability of the cultivar, either by making multiple visits to check different crops or cycles or by assessing stability within a population in a single cycle, if such a determination seems feasible under the circumstances.

One PBR Granted, Now Take On the World

If the cultivar is found to have the requisite distinctness, uniformity, and stability, and the application has been published at least six months, it can move on to being granted. There are some other formalities required before the Canadian PBR can be granted. One interesting requirement is a statement confirming that no Canadian trademark or similar indication has been, or will be, applied for or received for the denomination (cultivar name). If this seems odd, you should read this post.

There are many more things to consider when developing an international strategy for protecting a valuable seed bank or collection of genetics or clones, of whatever kind of plant with which you work. This is a brief (and simplified) overview of one country, using Canada as an example. As soon as your business expands to two countries, things become more complex; it becomes essential to track the first date of commercialization in each country where there is any commercialization, and to be aware of every country in which you’re operating or may want to operate. And you need to track and plan commercial activity not only in terms of propagating and growing, but also in terms of potentially selling harvested material and making products from harvested material. Very quickly there are numerous moving parts; watch for more blog posts to follow addressing some of them. In the meantime, you can click here to contact the author.

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.

My thanks to Eric Lundgren, JD, for helpful input on this post.

November 26, 2018/2 Comments/by Dale Hunt

Strain? Variety? Cultivar? Which is Which?

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

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

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

Cultivar is Most Correct, but Why?

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

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

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

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

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

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

Varieties Can Be Naturally-Occurring

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

Strain Has No Accepted Meaning

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

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

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

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.

Special thanks to TeePublic.com for use of the image at the top of this post.

November 18, 2018/6 Comments/by Dale Hunt

Don’t You Wish You Could Copyright a Plant Variety?

Copyrights, Genetics, Plant Breeding, Plant Patents, Plant Propagation, Utility Patents

PLANT PATENTS ARE SURPRISINGLY SIMILAR TO COPYRIGHTS

You’re a plant breeder. You have a great cultivar that you want to propagate and sell. You would really like to put it out there so that all your hard work could pay off and so that everyone could enjoy how great your cultivar is. Of course, you don’t want to sell one plant and then have the buyer of that one plant become your competition by using it to make and sell numerous clones. You want to be the only one who can sell clones, or you want people who sell clones to have to do so with a license and pay you royalties. Seems fair, right?

Copyright owners do something similar all the time — authors and artists create things like books and movies and songs. Then, if people use what the authors and artists created by making copies of their books or playing their songs, (1) they can only do so with permission, and (2) they must pay a fee for doing so. Copyrights protect against unauthorized copying of an original work and assure that the originator of the work can derive some benefit from his or her creation.

Something that most people (even most patent attorneys) do not know is that plant patents are very much like copyrights for plant cultivars. Plant patents only cover exact genetic copies (asexual clones) of the patented cultivar. They do not protect sexual progeny (plants grown from seeds) or plants that are merely similar to the patented cultivar. So, in that way, a plant patent is essentially a copyright on a plant cultivar.

When people think of a patent,

they are likely thinking of things like Thomas Edison’s light bulb, or patented medicines, or machines. Those kinds of patents are “utility patents,” and they typically protect inventions that are expressed as ideas and embodied as things with a function.

In contrast, a “plant patent” protects a unique, original genetic combination that started as a single plant. The plant patent also covers all individual plants with the same genetics — asexual copies of that original plant.

So, to review:

A utility patent relates to an inventive idea and can cover anything with certain similarities to that idea, depending upon how it is claimed.
A copyright protects against actual copying of an original work.
A plant patent protects against actual copying of an original genetic combination.

Hmmmm… maybe you CAN (almost) copyright a plant. Get a plant patent.

FYI, plant patents are much less complicated, much less expensive, and issue much more quickly than typical utility patents. So, if you’re a plant breeder, do not be intimidated by the term “patent.” Think of it as something like a copyright.*

For information on what it takes to get a plant patent, click here, for some common “rookie mistakes” to avoid click here.

*Because I’m a lawyer, I have to point out that a plant patent lasts for 20 years from the filing date, while the term of a copyright is much longer; and that copyrights exist automatically upon creation of an original work, while plant patents must be applied for and granted before the rights exist. So there are some important differences. This article is not intended to say they are the same but, instead, is intended to point out the usually unappreciated similarity between the two forms of intellectual-property protection.

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.

October 30, 2018/4 Comments/by Dale Hunt

Protecting Your Cannabis Genetics in Canada and Internationally

Strain? Variety? Cultivar? Which is Which?

Don’t You Wish You Could Copyright a Plant Variety?

Dale’s Blog

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