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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.

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.

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