Attacking Overbroad Patents – One Person’s Evidence is Everyone’s Defense

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LET’S DO THIS, AND DO IT RIGHT

Making the Most of Good Intentions and Energy

We all know there are abuses of power and of legal frameworks in the Cannabis industry.  Many good people want to know what they can do about such abuses.  Since I’m a patent attorney, I usually focus on people’s concerns about abuses within the patent system and how they affect the industry and the “Small Cannabis” community.

Patents can be focused, broad, or overbroad/abusive.  I see people discussing Cannabis patents that, with good intentions and abundant energy, misinterpret relatively focused patents as being overbroad.  These situations get earnest people upset and misdirect their energies and attention away from the real problem patents.  Related to this, I get frequent questions about what someone can do to attack an overbroad patent.  I have plenty to say about that, so hang with me.  I think this will be worth your time.

First, Some Definitions

Focused/narrow patent – covers subject matter that was clearly originated by the patent applicant, doesn’t make any real attempt to go beyond that.

Broad but legitimate patent – covers, at its core, something that was legitimately invented by the applicant.  Also covers some logical outgrowths of the core invention but doesn’t cover what is already in the public domain.

Overbroad patent – covers subject matter that was already in the public domain prior to the patent’s filing date.

Some people will want to debate whether all broad patents are abuses, and will argue that anything beyond a focused patent is worthy of attack.  Some of those people are even law professors.  So if you feel this way you’re in good company.  But that’s not today’s topic, so I’m going to direct this discussion to overbroad patents, how to recognize them, and what to do about them.

I also don’t want to get bogged down in, or have this blog dismissed as, an attack on any particular overbroad patent.  This blog may well give you some tools to do that, but I want to be more general and widely applicable.

It’s All About the Claims

The first thing you need to know, to understand a patent or patent application you’re looking at, is that the claims are where the action is.  If you scroll to the end of the part of the document that contains text, you will see one or more numbered, probably long, “sentences” that are usually written very oddly.  Those are the claims.  A patent claim is a verbal definition of the invention and, if you’re looking at an issued patent, the claims are a verbal description of the patent owner’s right to exclude.

Think of a claim as a word-fence around the invention.  If you’re inside the fenced area (i.e., if your product or method meets each and every feature recited in the claim), you infringe the claim.  You are trespassing on the property of the patent owner.  But if there is even one thing the claim recites that your product or method clearly doesn’t have, then you are outside the fence and you don’t infringe the claim.  You are not trespassing; good job!  To read more about patents as fences, click here.

One other thing about patent fences: if a patent fence encloses something that was previously in the public domain, the fence is in the wrong place and needs to come down.  In other words, if a patent claim “reads on” something that already existed before the inventor’s alleged invention, the claimed invention isn’t new and therefore isn’t valid.  Some patent fences, intentionally or accidentally, reach out to cover things that pre-existed the patent.  They are invalid, and the intentional ones are outright abuses of the system.

Knowing What You’re Looking At

So now you know where to find the claims and what they are.  Next let’s figure out whether you are looking at a published application or an issued patent.  And if it’s an issued patent, let’s determine whether it is a plant patent or a utility patent.  That is a very important difference.

Check the numbers on the first page of the document, near the top.  If the number starts with what looks like a four digit year, followed by some more digits, you are looking at a patent application.  If the number is four or five digits and is preceded by “PP” you are looking at a plant patent.  If the number is either 7 or 8 digits, you’re looking at an issued utility patent.  (This is all in reference to US patents and applications.  The numbering system can vary from country-to-country.)

Now that you know what you’re looking at, let’s discuss whether it is worth getting upset about it.

Patent Application – If you see a number like US 2019012345, you’re looking at a published patent application.  Almost all patent applications are published about 18 months after their earliest filing date or priority date.  Most patent applications contain claims that don’t end up getting allowed.

Think of the claims in a patent application as a letter to Santa.  They are a wish list, or the opening round in a negotiation with the patent examiner.  So if you’re looking at a patent application, just realize that the claims you see are not allowed, and don’t necessarily indicate what is really patentable.  They could all be allowed, but chances are fairly good that the final claims in the issued patent will be narrower than the wish list you see in the claims of the published application.

You might see some claims that would be a terrible encroachment on the public domain if they were ever allowed.  You can follow what happens with examination process on “Public PAIR.”  Click here for a blog post that tells you what you need to know to access Public PAIR and become a true patent geek.  And, in certain circumstances, you may even file a protest during the examination process.  This kind of protest requires evidence of unpatentability in the form of printed publications and/or prior patents.  Meanwhile, your best attack on these claims may not be in the form of published material that predates the application.  But if you do have some prior publications that would be on point, you can read about formally protesting pending claims by clicking here.

Plant Patent – If you see a number like US PP12,345, you’re looking at an issued plant patent.  Go to the last page of text and you’ll see there is only one claim, and the claim reads more or less “A new and distinct Cannabis sativa plant named XYZ as illustrated and described herein.”

Here is the most important thing about plant patents: they ONLY cover identical clones of the claimed plant, and you can only infringe a plant patent by asexually propagating (cloning) the patented plant without permission; or by using, selling, or importing parts of the plant (like the flower) without permission.  Therefore a plant patent is a lot like a copyright on a plant—if you aren’t directly copying it, you’re not infringing.  That also means that a plant patent can’t cover things like seeds, which aren’t exactly identical to the claimed cultivar.  Likewise, a plant patent cannot cover using the plant to breed other varieties.

One other important—and frequently misunderstood—thing about plant patents.  They are required by law to include a description of the plant in as much detail as is reasonably possible.  So you may see, in the body of the application, things about the plant’s chemotype or other descriptive information.  This description DOES NOT mean that the applicant is trying to—or ever could—cover all plants with those features.  That description is only there because the law requires it.  So take a deep breath and save your fierceness for certain utility patents, because a plant patent cannot really be overbroad according to our definition.  It’s not possible for a plant patent to cover someone else’s work–something the breeder didn’t invent.  Since a plant patent can only ever cover what the breeder actually originated—one single genotype—there’s nothing to get upset about.  You will do the most good for the most people by focusing on overbroad utility patents.

Utility Patent – you know how to recognize a utility patent and distinguish it from an early wish list (a published application) or a harmlessly narrow plant patent.  Don’t get stuck on the title or the abstract or even the description in the body of the application.  Those all carry information but they DO NOT tell you what the patent actually covers.  Instead go to Claim 1 and read it.  It might be a bit of a slog, but you’ll figure it out.  As you read it, ask yourself whether the claim describes something that you know from your own experience which:

– was sold, published, or otherwise known to the public;

– before the earliest filing date or priority date listed on the first page of the document.

If Claim 1 (usually the broadest claim in the patent) really does describe something that existed and was known to the public before it was “invented” by this patent owner, then the claim was erroneously granted and won’t be valid.  For something to be validly patentable, it must be new.  If something was already known before, it was part of the public domain or the public knowledge and isn’t eligible for patent protection.  To read more about patenting and the public domain, click here.  To read more about the almost-always impossibly broad “chemotype patents,” click here.

You Found a “Bad” Patent, Now What?

So what can you do about an issued patent that you believe covers something that wasn’t new at the time of filing?  You have some options.  You could file an “Inter Partes Review” or an “Ex Parte Reexamination” at the USPTO.  These are limited in their potential because they will both require evidence in the form of prior patents or printed publications.  This is especially challenging in the Cannabis industry, in which most of the prior commercial activity was never published—it was intentionally hidden from the outside world even though well-known inside the community.  So if your evidence that the claimed invention was in the public domain exists in some other form—like witness testimony—then you have some other options that will work better.

Your least expensive and most proactive option is to publicize what you know about the claim’s lack of novelty.  Get on social media and publish blogs and articles to point out your evidence that a particular claim is overbroad because it covers things that aren’t new or original to the patent owner.  Be specific about what you know.  And if you’re worried about the noise you’re making constituting some kind of incriminating admission of prior illegal activity, check with a lawyer.  Chances are good that any such activity has a statute of limitations.  Remember, this blog is NOT legal advice–you really do need a live lawyer to learn and analyze your exact facts.

Making Noise for the Public Good

What is the benefit of this kind of publicity?  Well, it may make the patent owner think twice about ever suing anyone for infringing the overbroad claim.  This is because patent litigation is expensive and if you sue someone for patent infringement, one of their defenses can be that the patent is invalid and never should have been granted.  A defendant will have a full opportunity to bring forth a variety of evidence to demonstrate that the claimed invention wasn’t new.  And if the court agrees with this, it will rule that the claim is invalid.  A final judgement that a claim is invalid means it can never be asserted against anyone, ever again.

So if you make a lot of noise about an overbroad patent and why it is invalid, the patent owner may well decide that it is too risky to sue someone who could turn around and invalidate the patent claims.  If your evidence is clear and credible, it would be pretty foolish for the patent owner to sue anyway.  And one thing about big corporations is that they often have shareholders and board members who will be very upset if money is wasted in litigation where an invalid patent is the only outcome.  So the more noise you make (if it is credible), the more you raise the awareness among investors and board members of how risky it would be to ever sue someone.

Defending Your Community

This is related to another aspect of preventive noise-making.  It shows a cohesiveness in the community—that one person’s evidence can be everyone’s defense.  If you are standing up to a bad patent, others will be more likely to stand with you.  This should especially be the case if someone actually were to be sued for infringing an overbroad patent.  If everyone in the Small Cannabis community were willing to share their evidence of patent invalidity to help the defense of one member of the community, you can be sure that Big Cannabis or Big Ag would become aware of this and would be more hesitant to assert overbroad patents.  To read more about standing up to Big Ag, as a united Small Cannabis community, click here.

The Small Cannabis community is rightfully concerned about the threat of overbroad patents.  But Small Cannabis is not paralyzed by fear—it is instead energized by a righteous kind of anger and willingness to stand its ground.  The more effective the community is in pointing out overbroad patents with real, credible evidence, the less likely Big Cannabis will be to continue to try to enforce these patents or even pursue them in the first place.  At some point, the investors and board members of Big Cannabis will see overbroad patents for what they are: a colossal waste of money and political capital.

So go make some noise, after doing some homework to make sure you’re targeting the real abuses.  Your brothers and sisters in Small Cannabis will stand with you and thank you for your efforts.

*Photo — Propagating Purpose Presents: The Grassroots Roundtable Discussion; August 24, 2019; Ukiah, CA; “The Giant We All Face”

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You, Too, Can Be a Patent Stalker or a Patent Geek – Intro to “Public PAIR”

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YOUR NEW HOBBY, IF YOU’RE LIKE SOME FRIENDS OF MINE

I Hope You’re Not a Robot

Have you ever wished you could know exactly what your favorite (or least favorite) patent applicants are claiming in their patent applications that are under examination?  Have you ever wondered what they are telling the patent examiner about their invention and why it is new and non-obvious?  Have you ever wished you could do an Instagram rant exposing some dishonest argument someone made to get a patent allowed?  Or maybe you just like learning more about the way the patenting process works and want to review the entire examination of a patent you’re interested in.  Whatever the case, you’re in luck, my friends.

I recently showed a friend how to access an online USPTO resource called Public PAIR.  That’s an acronym for Patent Application Information Retrieval.  His reaction: “Found my new obsession.”  So maybe he’s not typical, but he’s probably also not alone.  It’s available to anyone who isn’t a robot.  And yes, you have to prove that by showing you can tell the difference between dogs and fire hydrants, or whatever.  So if you’re not a robot, read on.

20th Century Memories – the Bad Old Days

Years ago the entire USPTO was a paper operation, just like everything else.  I remember the last days of that era, from when I was a baby patent attorney.  Examiners’ offices and attorneys’ briefcases were overflowing with files and reference materials.  But just like station wagons lacking seatbelts (yeah, I remember those, too–but just barely), a paper-heavy USPTO finally was superseded by something better.  The paper was replaced by electronic filing and paperless files accessible from anywhere.

The move toward paperless patent files happened around the same time that the USPTO was transitioning to a system of publishing applications 18 months after their earliest priority date.  That approach to publication finally put the US in line with the rest of the world, and it created an interesting opportunity for the public.  This is because the files of ISSUED patents have always been available for public inspection, even if they were hard to actually access.  But when patent applications started being published BEFORE ISSUANCE, it also made sense for the files of those patent applications to be available for public inspection.

It’s (Almost) All Public After 18 Months

So now, almost all US patent applications are published very close to 18 months after their earliest filing date.  And as soon as they are published, their associated “file history” also becomes part of the public record.  This is what you get to see when you access Public PAIR.  And yes, there is also a “Private PAIR” which gives paperless access to the files of still-unpublished patent applications.  It is private because those files are confidential until published, so only applicants and their attorneys can access those files.

What can you do with Public PAIR, and how do you get started?  Well, to get started you need to have an identifying number, either of the application, or the publication, or the patent.  You can find that information by going to the USPTO’s patent searching page and search either published applications or issued patents.  You can search by keywords, inventor names, patent owners (called “assignees”), etc.  Or you can go to MJPatentsWeekly.com and browse interesting Cannabis-related patents and applications there, then grab an application number and plug that into Public PAIR.

How to Find the Good Stuff

Once you are in the Public PAIR page for a given patent or application, you’ll see information about the applications title, examination status, filing date, and more.  And you’ll see some tabs near the top of the screen that give access to “Continuity Data” (related applications); “Assignments” (to identify who is the owner of record and how it got from the inventors to the current owner); and many other bits of information.  But the very best tab, which is USUALLY there but not always, is one called “Image File Wrapper.”  This takes you to a page with a column of dates in reverse chronological order.  Each dated item has a “Document Description” that tells you what it is.  If you trace it all the way back it will get you to the earliest papers filed, including the application itself.

Off to the right at the top of all of those rows is a blue radio button labeled PDF.  Check the box next to it and then click PDF and you’ll get a download of the ENTIRE FILE HISTORY.  In other words, you’ll have all of the steps in the process from when the patent application was first filed until it was allowed, or abandoned, or up to the current stage is if the application is still being examined.  With a little practice you can learn what to look for.  Among the most interesting documents are usually the Specification, Claims and Drawings near the bottom of the PDF, because they are the original content that was filed.  Also must-see are the rejections by the Examiner, labeled in the list of documents as “Non-Final Rejection” or “Final Rejection.”  And often best of all are the entries labeled as “Amendments.”  These are the submissions by the applicant to overcome a rejection.  They will often include changes to what is claimed, and will also include legal and technical arguments pointing out the flaws in the rejection.

It’s Not Football, but It Can Be Interesting

I wouldn’t say this is as interesting as a Fall Sunday watching football, but in some cases it can be quite fascinating.  I have reviewed these kinds of files with many clients who were concerned about someone else’s patent or application.  Many times we have been able to see serious weaknesses or errors in arguments made to overcome a rejection.  Those mistakes or misdirections create great opportunities for someone to challenge a patent if they were ever sued for infringing it.

In some cases when reviewing a file history for a client, we have identified errors or deceptions that were very clear, very big, and were absolutely critical to the eventual allowance of the patent.  In those cases, I have been able to give a legal opinion of invalidity.  Those opinions are not given lightly, because people make big decisions based upon their sense of the risk of infringing a valid patent.  And it’s always even safer to find a way to not infringe a patent, even if its validity seems highly suspect.

Do Try This at Home – But Just for Fun

So if you would like to try your hand at reviewing a patent file, weighing the arguments made to the examiner, deciding what you think about a given patent, now you know where to look.  Happy hunting.  Just remember that before you make any big decisions based on what you see, run it past someone well qualified to give you a sanity check.  Someone who has a lot of experience interpreting patent files and applying hardcore patent law to the things you have spotted that seem interesting.  And watch out about giving legal advice without a law license!  That’s illegal and risky in all sorts of other ways.

And for you stalker-hobbyists out there, see you on Instagram.  Tag me @plant.and.planet.  I might comment.  But it sure as hell won’t be legal advice.  Even WITH a law license and lots of experience, I only do that after a very careful analysis.  This new obsession of yours—this is just for fun and conversation.  Maybe a little rabble rousing.  But not for making business decisions.  Get a real attorney for that.  I know a guy.

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Demand This in Your Business Relationships: Transparency, Accountability, Trustworthiness

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ON THESE YOU SHOULDN’T COMPROMISE – BUT LEAVE ROOM TO BE FLEXIBLE ABOUT OTHER THINGS

Behaviors of a Good Partner, Whether It’s a Company, Organization, or Person

This blog post isn’t only for the Cannabis industry.  I think it applies universally.  And I’m not here to rehash Phylos, but it’s impossible to address this week’s topic without starting by acknowledging the “Phylos Effect” on the Cannabis industry.  The company’s admitted mistakes (and perhaps others that haven’t been admitted yet) started a dialogue within the Cannabis community centering on some core issues and topics.  We have hopefully learned some lessons for which we can be grateful.  I would boil the experience down to lessons learned about three principles that are inter-related and of vital importance.  They are (1) Transparency (2) Accountability and (3) Trustworthiness.  Since I am NOT rehashing Phylos, I will discuss these three principles in a forward-looking way.  People who want to look backward certainly can, and their activism undoubtedly energizes these lessons for us all.  My approach is no criticism of them.  I’m just leaving them to that approach while I take this one.

I’ll frame this discussion in terms of companies because they seem, as a group, to have the hardest time with these things.  Part of that might be inherent in corporate formation and function—it seems that the truly special companies take active measures to overcome the pressures, presumptions, and dynamics that disfavor Transparency and Accountability and Trustworthiness.  But this discussion applies equally to organizations and to individual people.  So as you read this, mentally substitute “person” or “organization” where I write “company.”  Ideally all of the parties and entities we deal with would embrace these values and behaviors.  That’s what we should demand.

Transparency – literally this means that you can see through something—that there is nothing to hide and nowhere to hide it.  Organizations and people who act with Transparency say what they mean and mean what they say.  They don’t have a hidden agenda and they don’t have to lie or intentionally mislead about their goals or their business plans.  What you see is what you get.

Accountability – this means that you take responsibility for your actions, your values, and your decisions and even (especially) for your mistakes.  Organizations and people who act with Accountability may not be mistake-free, but they will not try to dodge the consequences of their actions.  If there are some mistakes made or unintended consequences, they address them head-on and make all reasonable efforts to clean up their own messes.  And they welcome the opportunity to do so.

Trustworthiness – the meaning of this is clear: a person or a company is deserving of your trust.  And it’s hard to imagine a situation in which a person or a company would display real Transparency and behave with Accountability and NOT be worthy of Trust.  Does that mean you will always agree with the company’s choices or actions?  Probably not.  But you can at least trust the company to be real about what it is doing and why.

There is Room for Diversity of Priorities and Values

Let’s distinguish the behaviors of Transparency, Accountability, and Trustworthiness from some of the other things we might wish to find in a company – its values.  It’s not realistic to expect every company, organization, and person to have all of the same values that any one of us might have.  Diversity of goals, values, priorities, etc., can be good.  People who tolerate no deviations from their own values are typically dogmatic, inflexible, unreasonable, and no fun!

There is room to trust a company and still not always agree with it.  There needs to be room for that, in any kind of workable industry.  That can be hard for some in the Cannabis industry because it’s not just an industry.  In many ways it’s also a community, especially among the people who have been in it since before the regulated commercial industry emerged.

Things Have Changed

My sense from conversations I’ve had and observations I’ve made is that in the “old days” there may have been an even greater need for some shared values and priorities, as a matter of survival.  Maybe it was easier to draw lines and know who was on which side.

(I wasn’t there so I’m only going on what people have told me.  And I don’t in any way mean to be speaking for them or claiming the experience and credibility they uniquely have on this topic.  I’m only doing my best to synthesize my own experiences and observations and to do something useful with it.)

But things have shifted.  Business pressures can change people from being apparently Trustworthy to behaving differently and being less reliable.  I’ve heard numerous stories about that from clients who misplaced their trust in people they had known.  They didn’t think legal protections like contracts and patents would be necessary and only learned differently when it was too late.

And, strangely, some groups we may have automatically distrusted have now become essential partners if we want a place in a legal industry.  As an extreme example, even if you’re a survivor of intense persecution by the government, you can’t avoid working with the government to get the necessary licenses, pay taxes, and protect your legal rights.  It is an interaction that isn’t perfect and is almost never fun, but it’s a necessary one, nonetheless.

Value Fallacies?  We All Have Them—Some We Hold Dearly

Here are some examples of things that seem to be mistakenly valued in at least some circles.  Some people embrace these values and equate them with measures of Trustworthiness.  But I would argue that these are “value fallacies.”  They will distract us from a more useful focus on Transparency, Accountability, and Trustworthiness by getting us riled up about the wrong things.  You may disagree, even vehemently.  But give these some open-minded thought:

  1. Being anti-corporate – Admit it. Many of us have used the term “corporate” as synonymous with “heartless,” “sterile,” “evil,” and so on.  But in the US, it’s virtually impossible to achieve very much commercially without incorporating in some way.  Refusal to do so will eventually lead to major negative tax consequences and potentially paralyzing liability risks.  And incorporating isn’t a dodge of necessary taxes and all liability.  It’s a way to work within the system that is there, to permit a business to function over the long haul.  People who refuse to incorporate on some kind of moral grounds are playing a competitive game with one hand voluntarily tied behind their back.  It’s simply not realistic or sustainable in most cases.  We can and should distinguish between the good and the bad not based on whether they have incorporated, but based on their behaviors of Transparency, Accountability, and Trustworthiness.
  2. Being anti-success – I have heard numerous conversations and seen countless posts that seem to reflect a near knee-jerk reaction to distrusting any company that is experiencing success or even making an all-out effort to succeed. I believe this comes from experience with companies that chose success over the behaviors of Transparency, Accountability, and Trustworthiness.  It may also arise partly from some frustrations about who appears to be succeeding and who doesn’t.  It often seems that the playing field isn’t remotely level as to some in the community. That is something we should separately address so that all can have an equal shot at success. But I would argue that there is room for truly Trustworthy companies to succeed and, when they do, that should be celebrated rather than criticized or resented.
  3. Being anti-profit – We have been conditioned to treat the concepts of “profit” and “greed” as though they were the same thing. This implies that it’s possible to sustain a business without profit or that it’s impossible to make a sustainable profit unless a business is greedy.  But a business that simply isn’t profitable probably won’t be around long to provide jobs, products, or services.  It won’t be sustainable.  I don’t actually think we mean to criticize the profitability.  We instead may be reflecting our experience and assumptions that the profit was achieved through some untrustworthy behaviors.  Let’s re-examine that and demand Transparency, Accountability, and Trustworthiness without always distrusting profitable enterprises.
  4. Being anti-growth – Some companies get big by means of all sorts of abuses, but some companies get big just by being very good at what they do. It is a value fallacy to dismiss all big companies as being untrustworthy just because of their size.  It may be very appropriate to be skeptical and to demand an even higher level of Transparency and Accountability of larger companies, because it is easy for even the good ones to become distracted or impersonal.  But if all large companies are seen as the enemy, we ourselves are distracted from being prepared fully to take on and stand up to the genuinely bad companies.
  5. Being anti-patent – Of course I was going to get to this—I’m a patent attorney. Many believe that patents are inherently wrong.  But most of these same people use locks of some sort to protect their own property.  They pay for things produced by the labor of others instead of expecting that the labor should have just been donated to the public good.  They pay for creative content such as movies and books and music and usually understand that the artist who originated those things deserves to be paid for their work and talent.  But then for some reason they still believe there is something inherently bad about all patents, when in many cases patenting is the only way for a plant breeder or an innovator to get paid for her life’s work.  Being completely anti-patent means there are certain professions (plant breeder, innovator) that should just dedicate their work to the public domain.  That doesn’t mean that all patents are good or properly granted or appropriate.  Some patents represent invalid over-reaches and are to “good patents” like greed is to profit.  You can hate the abuses without hating the underlying system that sometimes is abused.  If you still don’t see how someone can embrace IP protection, such as patents, and still be an ethical and positive member of an industry and a community, please read this.

Demands and Goals

So is there a take-home message?  Is there a call to action?  Hell yes!

  1. DEMAND TRANSPARENCY – When you are dealing with a business (or an organization or a person), don’t start from a position of trust or distrust. Start from a position of demanding Transparency.  Ask questions.  Investigate.  See what the answers are like.  Are they evasive?  Do they make sense?  Are they consistent?  This is all about Transparency.  If a business lacks Transparency, that is when it’s time to start distrusting the business.  Don’t make it about whether the business is making a profit or trying to.  Don’t even necessarily make it about how big the business is.  Make it about Transparency first.

Be realistic, though, about the fact that many companies have to keep some secrets in order to function.  But there is a difference between keeping company secrets and being deceptive or misleading or outright untruthful.  People need and deserve a certain amount of privacy.  Even companies may need that.  But privacy can’t be a shield for dishonesty.

My goal for all companies is that they would embrace Transparency and welcome investigations and hard questions about how Transparent they really are.  They would be who they say they are and do what they say they are going to do.  We should not accept less from the companies we work with.

  1. DEMAND ACCOUNTABILITY – Observe and learn what you can about the company’s Accountability. Has the company been clear about its rules and values for itself and is it willing to be Accountable to those rules and values?  Does it show real Accountability when a mistake has been made?  Does it show a genuine commitment to fix its mistakes and clean up its messes?

Don’t presuppose that all good companies would have the same values or priorities or rules for themselves.  Allow for each company to define its purpose and mission and values.  But demand to know what they are and how the company will be Accountable for its actions.

My goal for all companies is that they would establish a Company Constitution to articulate the company’s values and priorities, for all to see.  This would show both Transparency and Accountability.  But a further goal is that Company Constitution would also set rules by which the company commits to abide.  Such a company would invite its customers and partners to hold it Accountable in its behavior according to its stated values and rules.  A truly Accountable company would create a Constitution strong enough that it could not be swept away with a change in ownership or control.  Investors would invest knowing what they are getting and would, in so doing, embrace that Accountability.  They would literally “buy in” to the company’s Accountability as part of their investment.

  1. RECOGNIZE AND REWARD TRUSTWORTHINESS – If you demand Transparency and Accountability you will have a Trustworthy company as your partner. If it sounds simple, it’s because it IS simple.

Don’t trust a company that does not consistently show Transparency and Accountability.

My goal for all companies and their customers and partners is that it would become commercially untenable for companies to be unwilling to consistently abide by the principles of Transparency, Accountability, and Trustworthiness.

And finally…

My goal for all of us is that we would not only demand these things of the companies and organizations and people around us, but that we would do our best, day in and day out, to abide by the same principles.  That we would also demand Transparency, Accountability, and Trustworthiness of ourselves in our dealings with others.

We as an industry and as a community will never get what we don’t consistently demand.  If there is a single most important lesson to be learned from recent events in this industry, this is it.  And it’s a lesson for any industry—maybe any relationship.

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Still So Much Confusion about IP Options for Cannabis – Let’s Fix That

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IT’S NICE TO BE NEEDED, IF NOT ALWAYS BELIEVED!

“UPOV PBR” in the US is Only Available for Industrial Hemp

There are a lot of people out there with some background in plant-related IP and some of them have strong opinions about the right way to do things.  I know because I hear from them.  That’s a wonderful thing about the open lines of communication available via social media and other tools—it seems nearly everyone is accessible to nearly everyone else.  I wouldn’t want it any other way, because this helps me understand what still needs to be emphasized and reinforced in blogs like this.

I’m going to borrow from some interactions this past week or so, editing very lightly to make it more generally useful.  Here is a question I was asked very recently: “If you have 20 years of experience with UPOV PBR why suggest to average clients to get an expensive plant patent for a Cannabis variety? Most can neither afford to obtain or defend a Cannabis plant patent unless I am mistaken?”

And here is my answer:

UPOV in the US is Uniquely Unlike the Rest of the World

First, UPOV Plant Breeders’ Rights in the US are only available under the USDA Plant Variety Protection Act (PVPA) and only cover seed-propagated plants.  An amendment to the PVPA permitting the USDA PVP system to also cover asexually propagated plants was passed as part of the 2018 Farm Bill, but the USDA is still working out the administrative rules and procedures for this, so applications to cover asexually-propagated plants are still not being accepted.

The original limitation in the PVPA to cover only seed-propagated plants was a special carve-out from the normal UPOV scope that covers both sexually and asexually propagated plants, and it was done this way in the US because asexually propagated plants have been covered under the Plant Patent Act since the 1930s (this Act established the plant-patent system as a special form of protection outside of the normal utility-patent system).

A Special Exception in UPOV Just for the US

The US is unique in having this divided IP system, and the UPOV Act of 1991 was specifically written to accommodate this, by including Article 35(2).  If you look at footnote 8 of the list of UPOV members, that “reservation” was exercised by the US and never has been by any other UPOV member.  Since the US is the only country with a split system, no other country will ever need to invoke Article 35(2).

OK so IP to cover plants in the US, unlike anywhere else in the world, is really three different systems:

  1. USDA PVP (i.e., UPOV) which is still available only for sexually propagated plants (but that exclusion will go away soon).
  2. USPTO plant patenting, which is only available for asexually propagated plants.
  3. USPTO utility patenting, which is available for both modes of propagation.

Testing for Distinctness, Uniformity, and Stability

Something else that is very important to know about the USDA PVP system is that it requires a seed deposit with the authorized USDA seed depository.  And until very recently, no kind of Cannabis seeds were accepted for deposit.  Very recently the USDA started accepting deposits of seeds for “Industrial Hemp” as defined in the Farm Bill (Cannabis sativa having less than 0.3% THC).  Once the USDA is equipped to work with asexually propagated plants, it will require “witness plants” for DUS examination.  DUS testing is the UPOV approach to determining whether a given cultivar is suitable for protection.  The D stands for Distinctness and asks whether the cultivar can be distinguished from the closest know cultivars including but not necessarily limited to the parents.  The U is for Uniformity and asks whether a group of seeds or a group of clones all grow out to being true-to-type—having the characteristics that define the cultivar.  The S comes from Stability and asks whether multiple generations of seeds or clones consistently show the same characteristics as previous generations.  These tests are done under consistent conditions to try to remove the variability that would come from different cultivation techniques from one test to the next.

USDA will never accept deposits or witness plants for a form of Cannabis that is still federally illegal.  And USDA has not yet worked out exactly how they will do DUS testing for clones of Industrial Hemp or any other clonally propagated variety people may wish to protect under USDA PVP/UPOV.

What this means, and it is part of my answer to your question about why I would suggest that people get a plant patent for their Cannabis cultivars is that UPOV protection in the US (the USDA PVP system) is that quite literally not available for most Cannabis cultivars that people want to protect.  The only kinds of Cannabis cultivars protectable via UPOV in the US are cultivars of seed-propagated industrial hemp.

If You Want to Protect Marijuana, You Can’t Go to the USDA

I have clients who want to protect their higher-THC cultivars and even who want to protect hemp cultivars that they are cloning instead of seed-propagating.  If I tried to push them toward UPOV protection in the US, I would be committing malpractice because that form of protection is absolutely not available, period.

The “deposit problem” that makes USDA PVP impossible for everything except industrial hemp is not a problem for plant patents, because the plant patent system does not require a deposit of any kind.  So, there’s no issue of federal illegality–the USPTO has been issuing Cannabis-related patents since the 1940s and has so far issued three plant patents for Cannabis cultivars, with many, many more that are pending and working their way through the process.

Getting Real About the Cost Comparison

Another part of your question also deserves comment, and that is the part about plant patents being expensive.  In fact, a USDA PVP application, including the seed deposit, costs $5150 in USDA fees alone.  So even before paying ANY attorney fees for this, the USDA fees by themselves cost more than we charge for preparing and filing a plant patent application.

Obviously there are USPTO fees on top of what we charge for our work doing plant patent applications, and there are costs associated with responding to the very common requests from the USPTO examiner to provide more information about the cultivar, but we typically see cost averages for plant patents, start-to-finish, including USPTO fees, between $10k and $12k paid out over the course of the process from examination to issuance.  I’m not meaning to imply that this is a trivial amount, but it’s very comparable to the cost of obtaining a USDA PVP registration (if it were even available).  ($5150 plus attorney fees for preparing the application and moving it through the process to allowance would likely add up to a total of $8-10k, and potentially more depending upon an attorney’s billing rate and whether anything unusual arose during the DUS testing that would require attorney work to resolve.)

The expensive form of US IP protection for plants is a utility patent.  However, it is currently the only option available for seed-propagated non-hemp Cannabis.  I won’t go into a lot of utility patents because this email is already getting long.  I have blogged about all of this at PlantLaw.com.

I Don’t Tell People What to Do, I Listen and then Tell Them About Their Actual Options

One last part of your question I’d like to address is the part about suggesting to average clients that they get a plant patent.  In fact, I don’t.  I listen first to what they want to accomplish with their cultivar, how they propagate it, how they are going to commercialize it, why they believe that they need some protection, etc.  Then we talk about the options and what their choices are.  It’s a matter of giving good legal advice that takes into account a client’s situation.  And in some cases, the advice is that if their security is strong enough, maybe they don’t need any formal kind of IP protection, especially if they are having trouble affording it.  See this recent blog post, and please do read all of it before deciding it’s incorrect or it’s bad advice.

OK, I hope that explains why I don’t recommend UPOV for my Cannabis clients.  I absolutely would outside the US, obviously, and will within the US, as one option, once the USDA PVP system accepts such applications.  However, even then, there are numerous considerations that go into deciding the right way to protect a given cultivar.  I went into this in a recent blog.

Are Self-Taught Cannabis Breeders Unqualified? I Say No

Just one other comment about plant breeders, and we may just need to agree to disagree on this point.  I have worked with PhD plant breeders at universities and with BS- or MS-level plant breeders who work for several of my clients.  While they have training in genetics and inheritance, every one of them that I have worked with has been focused on phenotypes.  They do a cross of parents that have some of the traits they are looking for and then they grow out many, many of the offspring and select the ones with the best phenotypes and keep propagating and selecting until they have something worth protecting.

This is exactly what I see self-taught Cannabis breeders also doing.  While I may understand more about genetics, epigenetics, pleiotropic inheritance, recombination rates, the biochemistry of terpenes and cannabinoids and flavonoids, these breeders know what they are doing, and they get very special results.  Obviously, some (including some clients I’m working with) are looking for a particular chemotypic profile or at least for something that meets certain chemotypic criteria.  They get their certificates of analysis (COAs), which are now readily available since many states require them as part of the legal Cannabis market.  And the breeders I work with definitely know how to read a COA and make decisions based on it.  College and formal training is not without value, but from where I sit, having worked with breeders whose training ranges from self-taught to PhDs in plant breeding, it seems to me that they end up doing and looking for the same kinds of things.  Now, if one were doing marker-assisted breeding as many in Big Ag do, that would be different.  I’m talking about fruit and grass and flower breeders, whose work approach in general terms is very similar to that of Cannabis breeders I know.

Well, that blog kind of wrote itself this week, by being lifted straight out of an email I sent.  I hope it’s helpful.  You can always get in touch for help with these things by going to PlantAndPlanet.com.

 

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Three Rookie Mistakes Plant Patent Applicants Make

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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 —

Read more

 

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.

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