Why Open-Source in Cannabis Genetics Doesn’t Work – And How to Fix It

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OPEN SOURCE WITHOUT ANY RECOURSE AGAINST VIOLATORS IS JUST AN HONOR SYSTEM

Don’t Kill the Messenger – But Please Read His Blog!

We have all heard of open source and are aware of how well it seems to work in the software industry.  And many of us have heard discussions of how desirable it would be to have a workable open-source system in Cannabis breeding.  I hate being the bearer of bad news, but a workable open-source system in Cannabis breeding (or any plant breeding), at least one that is in any meaningful way analogous to open-source software, isn’t possible under current laws in most places.

Before you decide to kill this messenger, I do have a proposal for a solution.  It’s not a particularly modest proposal but I think it’s an important one and should be pursued.  To state it differently, I am IN FAVOR of having open source as an option for Cannabis breeders, but we can’t get there from here unless some major changes in the intellectual property system happen first.  So let’s explore those changes, why they are necessary, and how to make them happen.

Open Source vs Public Domain – Not the Same Thing

Open-source systems were created in the software community in order to facilitate sharing, research, understanding and further development of software with fewer restrictions than those governing typical commercial software. However, it is important to understand the difference between an open-source system and an absolutely free-use or public-domain system. In open source the software source code is shared widely but with conditions. In contrast, in a free use or public domain approach the source code of the software would be dedicated to the public – expressly put into the public domain – such that the originator would retain no rights of any sort to control who used the source code, or for what purpose, or under what conditions. Even though open source is associated with broad access and sharing, it still carries conditions. Typically the condition is that software incorporating open source code must itself be made available under the same terms for others to use, study, and build upon.

The motivation behind an open source approach to Cannabis breeding (or any plant breeding) is that the rich genetic diversity available from different sources, different plant breeders, different collections of exotic or rare genetics, ideally would be shared with others. This would be so that they could use their access to this great source of genetic diversity in developing new cultivars as well as simply to preserve biodiversity and improve the overall gene pool of cannabis cultivars developed by plant breeders. So why not just create a free use/public domain system? Because, at least among some participants, there is a reluctance to hand over their special, rare genetic material in the form of seeds or clones for others to use if the recipient would not be willing to share with the community on similar terms. Typically, participants in an open source system are embracing a non-commercial or less commercial approach to breeding and do not want that “community value” to be siphoned off to parties with different values and different goals.  They want to restrict access to this precious genetic material only to those who are willing to respect the community and play by the same rules. Obviously, if someone is committed to a fully open sharing of genetic material, they are always free to do that by placing their material into the public domain and letting it scatter as it will. But I don’t think that’s usually what people mean when they talk about open source cannabis genetics.

Software is Different – It Has Automatic Copyright Protection

But first some background so we can fully appreciate the problem:  when someone writes code for software, that code is automatically protected by copyright the moment it is written.  There is nothing the writer needs to do for that copyright protection to exist other than to write the code.  It’s the same for this blog post.  As soon as I write it, it has copyright protection.  Done.  Easy.  Automatic.

Of course, if I want to have full leverage to enforce my rights as a copyright owner or be in the best position to get revenue from giving someone a license under my rights as a copyright owner, there are some additional steps I need to take.  So there still exists a formal, government-based system to “perfecting” or documenting copyrights, but the law of copyrights in most of the world is that they exist upon creation of any written work having a modicum of creativity and skill.

This makes an open-source system for software easy to create and enforce.  Simplifying (because this IS a blog and because open-source software systems are not my area of expertise), an open-source system is an agreement among participants who are willing to abide by the agreement.  In simplest terms, it’s a group deal that says “anyone who promises to only use this code in an approved way, and not to use it in a disapproved way, is free to use the code in developing their own software.”  Users who abide by those conditions are in compliance and all is well.  Those who go outside those conditions and use the code in ways that are not licensed under the open-source agreement are committing copyright infringement and are at risk of being sued, shut down, and liable for money damages.

Legal Recourse is the Essential Stick to Accompany the Open-Source Carrot

Why is this so easy and why does it work so well?  Precisely because the code is already (automatically) covered by copyright.  So going outside the agreement is plain and simple copyright infringement.  The point is that the copyright protection provides recourse against those who don’t play by the rules.

The contrast with plant genetics is clear: there is no automatic protection for plant breeders that would cover their rights in a clone or a seed they originated.  The only way to get that kind of protection is to apply for IP rights in the form of a plant patent, a utility patent, a USDA PVP certificate, or analogous rights Plant Breeder’s Rights (PBR) in other countries, almost all of which arise from the International Union for the Protection of New Varieties of Plants (UPOV).*

*In case you are curious about the acronym UPOV, it’s based on the name of the convention in French.  For more on the UPOV system, click here or here.

Alternatives to an Honor System

In the absence of any enforceable rights against people who don’t play by the rules, an open-source system for Cannabis genetics is nothing more than an honor system.  There is a lot to like about honor systems but we all see the problem—the dishonorable who refuse to play by the rules.  In open-source software they are called copyright infringers and can be sued.  In open-source Cannabis genetics, they are called sunzabitches and can only be disliked.  Do you see the contrast between the two systems, and the inherent problem?

I can only think of three solutions to this.  Unfortunately, they are all hard.

  1. Obtain IP protection for everything that is going to be part of the open-source system.
  2. Very strictly control access to the Cannabis genetics only to those who agree to the rules of the system.
  3. Change the law of plant breeding so that any unique genetic selection has some level of automatic protection upon creation.

Let’s analyze the pros and cons of each option:

  1. Obtain IP protection for everything that is going to be part of the open-source system.

One major problem with this is that is seems to run counter to the reason many people want open-source in the first place.  They want to keep things simple and many of them are not big fans of IP protection, at least as they think of it.  Typically they don’t have any major objections to IP in the form of copyrights, but they see plant IP as something different.

Also, there’s no avoiding the fact it’s quite a process to jump through all the hoops of obtaining IP protection for plant genetics.  That’s true even if you are working with someone (like me) who does this all the time and has for decades.  It’s still necessary to prepare an application, file it, pay a filing fee, wait a while, maybe do some more work to get it allowed, maybe also make a deposit of seeds or tissue, and pay an issue fee.**  So it’s complicated—vastly more complicated than it is with software.

**This is a simplified summary of the various hoops.  They don’t all apply in every system.  But at least three from the list are unavoidable in any system.

Why would it be necessary to get IP protection for everything in the system?  Because you need some kind of legal recourse against those who refuse to play by the rules.  In software it’s straight-up copyright infringement.  In this scenario it would be straight-up infringement of a patent or a PVP or PBR certificate.  Otherwise, again, you’re just using an honor system, when the problem is the behavior of the dishonorable.

  1. Very strictly control access to the Cannabis genetics only to those who agree to the rules of the system.

In this approach, the only people who ever could get their hands on a clone or a seed in an open-source system would be people who had already agreed, in a legally-binding way, to abide by those rules.  To be very clear, that legally-binding agreement would be some form of a group contract.  So anyone who made such a legally-binding commitment and then didn’t end up abiding by the rules would be in breach of contract.  There would be legal recourse against them.

The problem with this approach is security.  You’re really just creating a different kind of honor system, one that would be nearly impossible to trace, govern, or enforce if it grew beyond two or three members.  In this case the honor system is what people do with the genetic material they get access to.  What if they are careless with it and it gets out to a third party who never agreed to abide by the group contract?  You can’t be in breach of a contract to which you’re not a party.  So there may be some recourse against the careless member of the group, but there’s zero recourse against anyone who didn’t sign that contract.

This means that the system is only as good as the carefulness and security of the system.  Imagine how hard that would be to control.  It seems pretty much impossible.  And this is exactly why people end up seeking IP protection.  It gives you recourse against people with whom you never made an agreement – even against people you never heard of until you learned they were infringing your IP rights.  That’s usually the exact kind of recourse you need and can’t otherwise get.

  1. Change the law of plant breeding so that any unique genetic selection has some level of automatic protection upon creation.

OK, so we don’t like the problems with the first two options.  Let’s just change the law worldwide!

Notwithstanding how hard it would be to change the law in the US and across the world, this approach would make everything after that directly analogous to the open-source software system.  So there’s something to like about this.  The hardest work is done up-front and once per country, instead of once per plant variety (under approach #1) or instead of constantly (constant perfect security under approach #2).

My Dad is Such a Pain, LOL

I hear the murmurs—every single seed is, technically, a unique genetic combination.  It makes no sense to protect every single seed ever created.  Here’s my answer: you’re overthinking it.  Just because there is automatic protection for every single seed, that doesn’t mean you’re going to do anything with or about that protection for all of them.  It’s just a starting point that enables you to do what you want with the ones you care about.

To illustrate, I would guess that almost every text message my teenagers send has copyright protection.  OK, not texts that lack any originality, so we can exclude “lol” “wyd?” or “my dad is such a pain” (I’m guessing that’s not ORIGINAL to my kids).  But everything anyone writes that has any originality to it is technically protected by copyright.  Does anyone choose to do anything with or about all those copyrights? Of course not.  That’s not the point.  The point is that the valuable ones (like this blog!) have automatic protection without jumping through hoops, paying fees, and waiting for the protection to be granted.  So anything WORTH putting into an open-source system brings with it the recourse against those who won’t play by the rules of the system.  And recourse is essential to a meaningful, workable open-source system.

International Conventions Work

So all we need to do is change the law worldwide.  Don’t be discouraged—it happened with copyrights.  For a long time there was no copyright protection without registration.  That eventually became a problem—an international wrong that needed to be righted—and something called the Berne Convention was established.  177 of the world’s 195 countries are currently members.  The US finally joined the Berne Convention in 1988, only 102 years after its original establishment in 1886.  But better late than never, right?

How does an international convention get established?  By identifying a problem, promoting a conversation, and taking action.  This can happen with government action or with enough attention from non-governmental organizations (NGOs) that are sufficiently committed to change.  So consider this one of the first steps in a journey of a thousand miles.  But, with enough people understanding the problem and motivated to find a solution, that journey need not be a slow one.

Meaningful Next Steps

  1. If you can think of an alternative to the three hard solutions I have discussed here, please bring it to my attention in the comments or email me at DHunt@PlantAndPlanet.com. I don’t pretend to have all the answers.  I’m just a lawyer with some experience who writes a blog.  So please suggest some alternatives if you can think of some.  (Respectful dialogue is always preferable but if this blog made you upset and that motivates you, bring your passion and I’ll do my best to take the arrows.)
  2. If you think a change to the system of plant IP is worth some of your effort and energy, let’s translate this into more than just a blog. Make a comment or send an email indicating your interest and we will start with a group call and identify some genuine next steps.
  3. If you feel strongly enough about this, you can certainly forward this post to others and ask them to join the movement. I’m pretty sure the Berne Convention in 1886 started with a blog post and some texts and emails—maybe an Instagram rant.  If it worked for them, it can work for us.
  4. Maybe you’re aware of another group that is already on this. Please make me/us aware and we can join forces.

Let’s start something.

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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 —

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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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Patenting and the Public Domain

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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

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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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Why Should I Patent a Plant?

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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;

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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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