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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:

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.
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.
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.
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.
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!

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.

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.

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.

July 18, 2019/6 Comments/by Dale Hunt

COMMON BUT VERY AVOIDABLE MISTAKES IN PLANT PATENTING

Protect Those Cultivars, But Do It Right

Plant breeders must devote many years and tremendous effort to develop a new plant variety with strong commercial potential. In order to protect all that effort from illicit copying (propagating), many choose to seek protection under the U.S. plant patent system. There are some common mistakes that many breeders (and attorneys) make when they are first learning how the plant patent system works. The three most common are (1) naming the variety in a way that is incompatible with trademark protection; (2) misunderstanding the flexibility of filing-date and disclosure requirements; (3) incorrectly timing the filing of the application.

Don’t Mess Up Your Trademark Rights

When a plant breeder has spent years, or even a decade, developing a new plant variety and has finally made selections and propagation and gone through all the steps to really confirm that a variety has great commercial potential, it is not uncommon to be thinking almost entirely in commercial terms and to have a favorite “sexy name” for their new and exciting variety. The problem is that the sexy name is going to function as intended — in the capacity of a trademark associated with that variety. Trademarks are great, but the plant breeder also must select a “generic name” for the variety. And the tricky part is that the generic name is, by definition, a name that can be universally used in reference to the variety, without infringing anyone’s trademark rights.

Therefore, it is actually necessary for each commercial variety to have TWO names —

one is the generic name and one is the trade name. This might make sense in the context of trademark law and policy more generally. Trademarks are not allowed to take generic words out of our everyday language and make them the intellectual property of one owner. Nobody could get a trademark on “Light Bulb,” for a light bulb, or “Doorknob,” for a doorknob, and then claim that everyone who used one of those terms was infringing their trademark. No, the people who use those terms are just speaking the language–using the best words the language has for the things they are talking about. That is what a generic term is. So trademarks CANNOT cover truly generic terms.

Now, applying this back to plant varieties, when a breeder designates the generic name for a variety, this is tantamount to saying “this is a name that anyone can use in referring to this variety, without bumping into any trademark rights — this is the best word for the public to refer to this variety.” And by choosing a generic name for a plant variety the breeder is essentially dedicating that name to the public and foregoing any later claim that the name is the breeder’s trademark. On the other hand, the breeder can also pick a trade name that is not the generic name and that the breeder or the owner of the variety has exclusive rights to use so that the public can identify that name with the sourcing quality of the variety.

In my experience as an attorney representing plant patent applicants and applicants for worldwide plant breeders’ rights, I have seen this mistake made more than once. When I have inherited files from a prior attorney or files that were handled by the breeder without counsel, I often see a name that looks like it would be a great trademark, but used in the plant patent application as a generic name; and then I know downstream frustrations will occur or already occurred, when the trademark application for that name is rejected because it is, by definition, a generic name. There are ways to fix this in the U.S., but the problem is an even bigger headache if the mistake is made under the international convention under which most other countries handle their plant variety rights.

Don’t Delay Your Filing Just to Disclose More – You Really Can Add It Later

Another common mistake, especially among applicants and attorneys who are more familiar with utility patents, is a belief that the application must be complete to obtain a filing date, and cannot be changed after the filing date. This is incorrect. It is possible to get a plant patent filing date with relatively little disclosure. For more details about that, click here. Likewise, it is possible, even very common, to add to the disclosure as part of negotiating the allowance of the application. Utility patents have strong prohibitions about adding “new matter” after the filing date, but adding a more complete description of a new plant variety, after the filing date, is not considered new matter, since it does not actually change the underlying thing being described (the plant variety itself). The goal is to describe it as completely and accurately as possible, and it is entirely permissible to file an application with some very basic information about the variety, and then supply more details later.

A variation on this mistake is filing what is intended to be a plant patent application, but filing it as a utility application. This is also something that has happened on some occasions when someone new to the process assumed that the two systems were the same, or were more alike than they actually are. The “formalities” required for plant patents, including fees and inventor declarations, are not the same as utility patent formalities. One of the first Cannabis cultivars that was the subject of an attempt to get a plant patent was originally mis-filed as a utility patent, which caused quite a lot of unnecessary delay and paperwork for the applicant. This is just one of those things someone who hadn’t previously filed a plant patent may not catch the first time around.

This misconception regarding how much you have to disclose to get a filing date can matter when some sort of commercial activities may put the patentability of the variety into question. Suppose a commercial sale of a large order of plants (clones) of the variety is about to be made, but someone has the mistaken notion that they need to have the complete, detailed information about the variety in order to be able to file the application. This would either unnecessarily delay the sale, pending the filing of the complete application, or it would cause the owner of the variety to believe that it is necessary to forego patenting in order to not delay the sale. In reality, it is usually possible (if not ideal) to file a plant patent application within a few days of deciding it needs to be done.

Know Your Deadlines and What Creates Them

This timing issue is a form of the third mistake — not realizing that a plant patent application can be filed even before all of the information that will eventually be required for allowance is available. The other form of the third mistake is filing too early. As noted in this post, developing a new variety takes a long time, and some of that time may involve test-growing the plants in various settings, trialing harvested material, even selling harvested material. If the breeding and commercialization team does not understand what leads to loss of novelty (public availability of asexual propagating material of the variety), and what does not (e.g., sale of harvested material*), the team can make the mistake of filing the plant patent application too early. Why would that matter? Because the patent will expire 20 years after the filing date, so filing no earlier than necessary will result in a longer practical term of protection.

Understanding what is unique about the plant patent system can help plant breeders and companies avoid these and other mistakes. So, to borrow a line from the notorious Christopher George Latore Wallace:

And If You Don’t Know, Now You Know

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.

February 1, 2019/4 Comments/by Dale Hunt

WHAT IS THE PUBLIC DOMAIN?

We Are Free to Use What Is In the Public Domain – It Belongs to Everyone

We’ve all heard of the term “public domain.” But what does it mean and how does it relate to intellectual property? The public domain can be thought of as everything that belongs to the public, rather than to any one person — things the public is free to use without encumbrance, having to pay a fee, or facing risk of a lawsuit. Knowledge gained by academic researchers or long-known to everyone is part of the public domain. We can all use that knowledge without paying anyone a fee. That is public domain. Likewise, the subject matter of an expired patent, or something that was never patented, is also part of the public domain*.

There are other things that are in the public domain that ‘belong’ to the public, such as free use of the language to communicate. Imagine if someone tried to trademark the word ‘joint’ for their marijuana cigarette product saying, “Now this word belongs to me and to my product and, if you use it, I will sue you.” No rational system would permit that, because it would take ‘joint’ out of the everyday vocabulary; that word is part of the public domain.

IP Should Never Take Something OUT of the Public Domain

What about a marijuana plant cultivar that has been

known and used for a long time? Can someone who is newly commercializing it (or something with its properties) successfully patent it or write patent claims that include such a cultivar within the scope of the claims? We are well-aware that people are trying to do just that. Our visceral reaction tells us this is wrong; and it is also rejected by public policy everywhere that patents exist. It should never be possible for a new patent to take something out of the public domain and to restrict its accessibility.

Sometimes people ask what qualifies for a patent, a trademark, or a copyright. The answer is usually somewhat instinctive: it must be something they created; it can’t be something that has already been around for a long time without that person’s contribution. This kind of instinctual analysis inherently reflects a notion that whatever has recently been created and has value is not part of the public domain and could at least, theoretically, belong to one owner. It is a very important part of intellectual property theory that, once something is in the public domain, intellectual property rights should never be allowed to take it back out.

Protecting the Public Domain from Encroachment by Overbroad Patents

This is the reasoning behind banning trademarks on any generic term; it is also the reason for only permitting patents on things that are new. So when a patent examiner is given a new application to review and determine whether the things that are being claimed are really patentable, he or she looks at the “prior art” — which is really just published information about what is already in the public domain. Part of the process of patent examination is to identify whatever in the public domain is closest to what is being claimed as an invention and, if it is too close, the patent examiner rejects the claims. So, in this way of looking at things, the patent examiner is protecting the public domain from encroachment by a patent applicant.

If something has been known, done, sold, or discussed so long and/or so widely that no one can legitimately claim it is still their own unique secret, that’s public domain — even if that thing (whether public, cultural, academic, or commercial) was never published. Of course, in some industries, the actual public domain and that part of it which is published are not very much alike.

The Problem of Public Domain in the Absence of a Detailed Published History

A great example of this is the marijuana industry, in which the lack of publication was associated with the illegality of the activities. Now that the activities are no longer illegal in many jurisdictions and people are applying for patents, the industry is facing this unique challenge. Patent examiners performing their normal search of relevant publications in the prior art have almost nothing to work with. The lack of relevant prior art can result in examiners allowing patent claims that cover public-domain subject matter, because there’s no prior art basis for rejecting claims that are that broad.

On the other hand, people who have been working in the industry for a long time are very well aware of things that were openly known in the industry but that were never published. Therefore, particularly in the situation of marijuana patenting, there is a large disconnect between what is in the ‘real’ public domain and what is in the prior art.

Coming back to the more general concept, the message regarding the public domain is that people really can at least start by trusting their instincts about whether something should be protected by a trademark, a patent, or a copyright. Is it really new, or does it already belong to the public? That’s the question. The answer gives us a good starting point for discussing whether something should be protectable in an intellectual property system.

* For purposes of brevity, I am using the term ‘public domain’ very broadly; there are exceptions and nuances I won’t go into here, since this is a blog and not a treatise.

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 31, 2018/4 Comments/by Dale Hunt

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

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