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
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.