Utility Patents Archives - Page 2 of 4

“Can I Patent a Chemotype?” Here’s What You Need to Know Before You Try

Genetics, Patenting - Novelty, Plant Breeding, Prior Art, Public Domain, Utility Patents

ANOTHER GREAT QUESTION FROM PEOPLE IN THE BIZ

Whiskey Tango Foxtrot?

I have been asked many times, in one form or another, the question in the title of this post. More often than not, it uses different pronouns and is phrased a little more emphatically — like “Can they really do this?” or “How is it possible that someone could patent a chemotype?!” or “What the $&#*!?!?” (in this latter phrasing, the question is implicit in the context of the patent(s) the questioner is referring to at that moment).

Like most good questions people ask of lawyers, there’s a technically correct answer and a more informative explanation of the practicalities. So let’s unpack this as efficiently as possible, with the usual caveat that this is simplified around the edges to make it more suitable as a blog post than a week or two of a law school course.

Everyone Loves Etymology, Right?

First we can define some terms: genotype, phenotype, chemotype. The common denominator in these terms is type — as in something that is typical or representative. The variables in these terms are:

geno — referring to the genes associated with or causing the plant’s ‘type’;
pheno — referring to the observable characteristics of the plant (the various phenomena, more or less); and
chemo — referring to the chemistry of the plant.

Chemotype is a subset of phenotype; it is focused on the chemical aspects of the phenotype, whereas the entire phenotype would be any and all outwardly observable characteristics. The characteristics of the phenotype are dictated by the way the genotype interacts with the environment over time, as well as by variations in which parts of the genotype are expressed at different stages in the life cycle, growing season, etc.

A plant’s genotype will remain the same throughout its life, and all of the clones of a given cultivar will have the same genotype; however, the phenotype can vary a lot with the age of the plant, as well as with how the plant is cultivated. For anyone who has ever grown clones, this is not news: even though clones all have the same genotype, they are still very dependent on other factors for how fast and well they grow and for what their terpene and cannabinoid profiles look like in any given test. There are some broad ranges within which the plants will always be limited by their genetics; however, within those ranges, a huge amount of what will be observed — the phenotype or the chemotype — will depend upon the cultivation of the plant.

Back to the Question Everyone is Asking

This takes us back to the question: Can someone patent a particular chemotype without being limited to one specific and exact genotype that could produce the chemotype? Is it possible:

to generalize the expression of a given chemotype as an invention and, if so,
what would it take to get such a patent and have it stand up as being truly valid?

The answer to the first question is a qualified “yes” — yes because IF you could fully meet all of the requirements of patentability, then that particular chemotype really would be your original and unique invention — your contribution to the “progress of science and useful arts”* and the system (as it’s presently set up) would reward you with a patent. The answer to the second question is, “Good luck, buddy — you’re going to need that and a lot more for your chemotype patent to be valid and enforceable.”

*This phrase is an exact quote from the US Constitution forming the basis for the patent system. It’s why Congress will never be able fully to abolish the patent system — it’s written into the Constitution itself. But Congress and the USPTO can create laws and rules, respectively, defining what it takes to get a patent. And those laws and rules are stacked against any kind of chemotype patent being validly granted. It’s not impossible; but, if all the rules are followed and all the right questions are asked along the way, it would be very damn hard to patent a chemotype.

Here’s why…

You Can’t Patent Mother Nature

Your first hurdle in patenting a chemotype:

Valid patents cannot cover (or claim) a product of nature. If a patent claim is written so broadly that it covers something found in or produced by nature, that claim is simply not patentable subject matter; if it somehow gets through the USPTO anyway, it is invalid. This is a long-established Supreme Court interpretation of §101 of the Patent Statute. The statute describes a patentable invention as “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” Products of nature do not fit within that description. Fundamentally, they aren’t new and should never be the subject of someone’s legal monopoly. Another way of looking at it is that no human can ever be named as the correct and legitimate inventor of something that nature itself originated.

Now before readers interpret this as meaning that plants of the genus Cannabis, per se, having originated in nature, are all unpatentable — not so fast, friends. The product-of-nature doctrine is applied strictly and narrowly. The unpatentable product of nature must be the SAME as what is found in nature, or whatever changes were made to it must be below the threshold of human action such that they do not amount to invention. An example of this from a Supreme Court decision is the doctrine that merely isolating something found in nature is not, without more, an invention. If a gene is found in nature, that exact gene isn’t patentable just by being isolated and sequenced. But many kinds of modifications to it would still be patentable.

You’re Saying This Chemotype Never Existed Anywhere, Ever?

To patent a chemotype, the first requirement would be that such a chemotype NEVER EXISTED before as a product of nature. Never. Anywhere. Period. If you ever get sued for infringing a chemotype patent, one thing you can do to defend yourself is to show ANY example of a naturally occurring plant with the same chemotype. If your evidence is accurate and credible, that would end the matter.**

** Time for more fine print: All of this discussion about outcomes assumes that the judges and juries involved will understand and follow the law. This is part of why litigation is such a headache — you can’t be sure the court is going to get it right, even if you KNOW you are right; you might have to win on appeal.

Is It Genuinely New – Not Just a Minor Variation?

Your second hurdle in patenting a chemotype:

Valid patents are only available for that which is genuinely new and non-obvious. Under §102 of the Patent Statute a person is entitled to a patent unless the claimed invention was already published, sold, or otherwise available to the public before the filing date of the person’s patent application. In other words, the invention has to be NEW or it’s not patentable. So, even if it’s not a product of nature, if someone else got there first and made it known or available to the public, it’s too late for you to patent it. And under §103, even if something is technically new, it’s still not patentable if the “new” thing is a trivial variation on something else that’s already known. This is because it would be considered obvious, and obvious variations on what is already known are not inventive enough to qualify for a patent.

To patent a chemotype, you would have to demonstrate that your invention wasn’t already known to the public and that it’s sufficiently different from what’s already known to qualify as being non-obvious. The way this works in real life is that you would describe your chemotype in your patent claim(s). Then the USPTO examiner would send a rejection listing all the reasons you aren’t entitled to a patent. In most cases, the examiner will at least try to argue that your invention isn’t new or is obvious and will cite whatever prior patents or scientific papers he/she could find in a search that are most like your invention. After the examiner cites this closest “prior art” available, you would need to explain why your invention is different enough to qualify for a patent.

But what about a chemotype that was available to and known by the public in a previously illegal industry? There probably won’t be any academic publications or prior patents describing that chemotype — but that doesn’t mean it wasn’t known; just not published. Essentially, the examiner is flying blind and can’t give the claim the rejection it deserves. This happens a lot in Cannabis patents precisely because of the lack of a full body of prior academic and patent literature thoroughly documenting what was known as of any particular date.

Your Defense and Your Evidence

If you ever get sued for infringing a chemotype patent, one of your defenses can be to show that the same or obviously similar chemotype already existed in one or more cultivars or strains known to the public before the filing date of the patent asserted against you. Just because it wasn’t published, it could still be known to the public in a shadow industry. You might have a hard time proving what was known but, if you can, you’ll be out of trouble.

How do you prove that? Find a cultivar that tests today within or very close to the boundaries of the claimed chemotype and show that the cultivar pre-dated the invention. You might need to collect some witnesses with personal knowledge of this. But, if your evidence is persuasive, you’ll be able to invalidate the patent for lack of novelty or for obviousness, and it won’t be a threat to you or anyone ever again. Once a patent claim is invalidated in court and all appeals are exhausted, that claim is gone — permanently invalid. Game over.

The Mother of All Cultivation Manuals

Your third hurdle in patenting a chemotype:

To have a valid utility patent, the description must be commensurate in scope with what is claimed and must also be “enabling.” Patent owners are given a temporary monopoly on their invention in exchange for disclosing enough about their technology to put the claimed invention fully into the hands of the public after the patent expires. This is an important exchange between the patent owner and the public. Basically, we give the inventor a monopoly for a while in trade for that invention belonging entirely and permanently to the public after expiration, and for the teachings in the patent becoming part of the public knowledge no later than when the patent is granted.

To qualify for a patent, the description of the invention must be enough that someone with the basic relevant skill set could read the patent and be able to follow it to make and use the invention in its full scope without a lot of trial and error (termed “undue experimentation” in patent jargon). This is referred to as an “enabling disclosure” having an adequate “written description” because it enables the practice of the invention to a degree that is commensurate with the full scope of what is claimed.

Of course, it’s impossible to teach someone how to make an exact, unique genotype that defines a single cultivar just by a written account of how the cultivar was made. Every product of a sexual cross is as unique and different as you and your siblings are unique and different. For example, unless you have an identical twin, you have a unique genotype that could never be recreated based on a description of your parents and how they made you.

Why Many Patents Claim Narrowly and Make Deposits

For patents that claim a specific cultivar, the enablement requirement and the written description (full scope) requirement are both met by making a deposit of tissue of the cultivar — something with the same genotype. In such a case, since the full scope is just that one genotype, it’s adequately matched by the deposit itself; and, as long as the deposit is viable, someone who later obtains the deposit after the patent has expired will be enabled to make and use the invention.

But there’s the rub: if you’re claiming to have invented a new chemotype that is not limited to one single genotype, you have to provide an enabling disclosure for that whole chemotype. You must teach someone how to get there without giving them your genetics as the starting point. You have to be able to describe how to do this on paper. Fully. You would need to teach them which cross(es) would work to get the right genetic background that could ultimately produce the chemotype. But that would not be enough. Since we all know that genotype by itself is not sufficient to dictate chemotype, you would also need to provide all the cultivation details that would be required for someone to produce that chemotype reliably and reproducibly without undue experimentation.

Good Luck with That

If you want to get a patent on a chemotype without being limited to a specific genotype, your patent application needs to include any and all cultivation techniques, details, and tricks necessary to get the chemotype consistently. Ask an experienced cultivator if that would be easy or hard or nearly impossible — WITHOUT any specific genetics to start with — just the results of a cross, if that. And, if a certain cross would be required to get started, the patent claims would need to be limited to include that cross. If the claims don’t require even that much genetic background, the written description would have to be even more detailed and thorough, giving examples of different crosses that would work (again, all of this without requiring the reader to engage in undue experimentation).

Can you imagine what kind of defense you could raise if you were ever sued for infringing a chemotype patent? You could definitely point to any inadequacies or incompleteness in the disclosure’s having complied with the written description or enablement requirements. You could simply provide evidence that, within the limits of a reasonable amount of work, a person with the basic skill set could not consistently replicate what is claimed. If your evidence is persuasive, that’s another way to invalidate the claims asserted against you; another way to kill the claims so they can’t be used against you or anyone else ever.

Still Want to Try? Here’s Your To-Do List

Do you still want to patent a chemotype so broadly that it doesn’t require someone to be using your particular genetics? OK. Just be sure:

it’s not a product of nature;
this is the first time this chemotype has ever existed, anywhere, ever; and
to describe how someone without access to your genetics could read your instructions and consistently produce the chemotype.

If you can do all that, then you really did invent something worthy of a utility patent according to the current law. You have done your part to promote the progress of science and useful art. Congratulations.

On the other hand, if you simply put one over on the Patent Office because

the current state of Cannabis-related publications didn’t give the examiner the tools to reject your application; and/or
perhaps the examiner, being somewhat new to Cannabis, didn’t fully appreciate how variable Cannabis chemotypes can be;

then your “success” in getting a patent granted does not mean that your patent is valid; it means you spent a helluva lot of time and money getting a patent with some serious problems — a patent that will be (should be, if the system works) impossible to enforce.

And of course it’s possible that some have applied for overbroad patents in good faith, not fully knowing what they were up against. People and even companies can learn from experience as they pursue their goals; what may have seemed like a good idea at one time may not seem to have been worth the trouble and expense in retrospect. That happens plenty of times and in plenty of settings. The right approach could be just to leave those lessons learned and not make a bad thing worse by initiating litigation with a patent that may well be invalid.

Suing with an Invalid Patent – Everybody Loses, Especially the Patent Owner

If an owner of an overbroad patent were to sue someone for infringing it, expect the Cannabis community to band together to prove this and to invalidate the patent. There are enough people concerned about this issue as a matter of public policy that they are very unlikely to stand idly by while such a patent owner rolls up a series of small victories to the point of appearing to be invincible.

The opposition to overbroad, invalid chemotype patenting is wide and deep and energetic. Ideally there will never be a patent infringement suit requiring a demonstration of just how wide and deep and energetic the opposition is. But hopefully this explanation exposes how hard it would be to get a valid chemotype patent and how an invalid chemotype patent could be attacked and killed in court.

A Few More Things to Know

This entire discussion is about utility patents. This is in contrast to plant patents, which leave no potential for general patenting of a chemotype, since they are always limited to plants of one single genotype.
To read more about how a valid patent can never remove something from the public domain that is already in it, click here.
To read more about plant patents and how they are like copyrights, 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.

–image credit: Leafly

June 25, 2019/4 Comments/by Dale Hunt

Let’s Talk About Reproduction and How You Will Get Paid

Genetics, Grow Your Business, Hemp, Marketing, Patenting - Novelty, Plant Patents, Plant Propagation, Utility Patents

HOW’S THAT FOR A TITLE? YOU’D BETTER READ ON

Hubbub Is a Word and It Happened This Week

I always get the best blog ideas from questions that come up during the week, and this week was no exception. A friend of mine whom I haven’t yet met in person (interesting times, these) brought to my attention some controversy on social media about a plant patent and asked me a series of great questions about the patent itself and the hubbub around it. (I’m surprised my spellcheck didn’t go nuts just now, but apparently hubbub is a word.)

The crux of it was this: There was a plant patent posted somewhere on social media and certain portions of the description were highlighted. One portion described that the new cultivar was made from an open cross between two traditional varieties. Another highlighted portion pointed to some phenotypic features of this new variety that could apply broadly to a huge number of other varieties as well.

When you look at a plant patent, you’ll typically see several pages of detailed botanical description like “Stem morphology.—Rugose — longitudinal ribs with corky lenticels on older portions.” Or you might see curious botanical terminology like “hirsute peduncle.” And, after you google “hirsute peduncle” to see if that’s even real (it is) and what it looks like (it’s not as weird as it sounds), you will still be left wondering how it helps protect this particular cultivar or distinguish it from others.

Plant Patents Got People Worked Up

People seemed concerned that — although plant patents are supposed to only cover clones — the written description was so broad it could cover much more than just the clones of this one variety. Could it also cover their plants and, therefore, be an over-reach? Is this the next bad patent that is going to cause trouble for the industry? Or, on the other hand, if this patent really ONLY covers clones, what is the point of even getting a plant patent when Cannabis is often propagated by seeds AND clones?

These are common questions and they deserve some respectful discussion. The fact that these questions come up a lot reveals that this topic needs to be explained in better ways and in more detail. I hope this helps.

Let’s start with some historical background. The original Plant Patent Act was passed in 1930 and updated in 1952, long before there was any DNA testing. So it required (and still does) a description “as complete as is reasonably possible.” For this reason plant patents go into all kinds of detail describing the plant botanically, providing pictures, describing how the cross was made, describing the closest known varieties, etc.

Ignore That Hirsute Peduncle

What you need to know is this: NONE OF THIS DESCRIPTION MATTERS when it comes to infringement. Everybody knows — especially with plants like Cannabis — that phenotype and especially chemotype can be highly variable based on where and how the plant is grown. They also know that a lot of plants that are not genetically the same can be very similar in appearance.

When it’s time to prove infringement, DNA tests will be done and the plants will have to be genetically identical or there will be no infringement. Not similar; identical. Plant patents strictly and narrowly only cover clones of a single variety, where that variety was originally created by a sexual cross or a mutation — a single genotype with no equivalents or near-misses. So everybody can take a deep breath and ignore what’s in the detailed description; it’s only there because the statute requires it.

Interestingly, you don’t need any DNA information when you file a plant patent (another historical legacy of when the statute was written); but that’s OK, because that sequence isn’t changing — it will be there ready for its day in court when you need it. You may have other reasons to lock in the record of your DNA information and your proof of ownership now, but you won’t need it to get a plant patent application filed or allowed.

But Please DO Focus on This

Now that we’ve covered what to ignore, let’s talk about what to focus on. I’m going to start with a short list of the most important things you should know about plant IP in the US.

First determine whether you are looking at (or talking about) a Plant Patent, a Utility Patent, or a USDA PVP Registration. They are very different kinds of protection and don’t necessarily all make sense for the same kind of business.

The easiest way to do this is to look at the number on the first page, upper right corner. If it has PP followed by five digits, it’s a Plant Patent. If it has seven or eight digits, it’s a Utility Patent. If the number starts with a string of digits that looks like a year, it’s either a published patent application or a USDA PVP Registration. That will be easy to tell based upon which agency published the document.

Now that you know what you’re looking at, it’s time to know (or remember) what kinds of rights it grants.

Like a Copyright – Meaning It’s about Direct Copying

A Plant Patent is very much like a copyright on a single cultivar – it protects ONLY clonal copying of the exact genotype of the claimed cultivar. Note that this is NOT defined by the chemotype. Chemotypes can vary depending on how the plant is cultivated, but genotypes remain constant. Plants are like us in this way — we might be thin in the summer and chunky after all the holiday meals, but we have exactly the same genes all year long.

A Plant as An Invention – Protecting an “Idea” Several Different Ways

A Utility Patent treats a plant (or anything) as an invention. You can claim pretty much anything you can put into words if you can convince the patent examiner that what you have claimed is (i) new; (ii) not obvious; (iii) adequately described; and (iv) “patentable subject matter” (which means, among other things, not something already existing as an unmodified product of nature).

This flexibility in claiming matters a lot, especially with a plant like Cannabis that can be reproduced with clones and seeds and that can be commercialized as flower and extracts, as well as the clones and seeds themselves. This is because, in a utility patent, you can claim more than just the clones of one genotype. You can at least try to claim things like*:

1. 1. Plants having the same genotype as the seeds or tissue on deposit as accession #ABC at XYZ depository.
  2. Progeny of the plants of claim 1, or any part of said progeny.
  3. Seeds of the plants of claims 1 or 2, and progeny thereof, and any part of said progeny.
  4. Harvested material or extracts from any parts of the plants or seeds of any of claims 1-3.
  5. A medicinal or recreational product made from any of claims 1-4.
  6. A vape cartridge containing an ingredient from claims 4 or 5.
  7. A method of making a medicinal or recreational product by providing a material from any of claims 1-4, performing at least one processing step on the material, and obtaining a product.

*These are simplified – this is a blog rather than a law school course

Seed Rights – With Important Exemptions

A USDA PVP Registration

- - protects seeds* from being “copied” in bulk to compete with the owner of the variety
  - but expressly permits use of the seeds for breeding to make other new varieties (this is called the “Breeder’s Exemption“)
  - and also expressly permits a purchaser of protected seeds to keep enough seeds to replant the same acreage as the seeds he/she originally purchased for planting (this is called the “Farmer’s Exemption“).

*USDA has recently expanded PVP to cover non-seed varieties, but that is beyond the scope of this post.

It’s All About How You Plan to Get Paid

The reason that it’s so very important to understand the differences among these three kinds of protections is that some of them MAKE NO SENSE and have ALMOST NO VALUE, depending upon your business model. In other words, going back to the (hopefully) provocative title of this blog:

Let’s talk about reproduction/propagation and how you will get paid.

If you are selling seeds, and only selling seeds, would it make any sense to spend your money on a plant patent? Almost certainly no, if your IP funds are limited. The only reason I could think of to still file a plant patent is if the cultivar that is the source of the seeds you want to sell is, itself, so valuable that you would want to control its propagation, behind the scenes. In that scenario, the plant patent would be insurance against theft of the propagating material of that “seed parent” cultivar. That plant patent would certainly give you good legal recourse against anyone who showed up in possession of plants of that genotype later on, since that exact genotype would never come from the seeds you are selling. But a plant patent would not directly fit or support the seed business itself at all.

So what kind of protection would make sense if you are selling seeds? Well, it really depends on what the seeds are for. The first question you’d ask today is whether the seeds are for industrial hemp because, if they are not, your only option in the US is a utility patent. USDA PVP registrations are available for industrial hemp, but still not for higher-THC Cannabis (over 0.3% THC).

If you are selling clones… well, you REALLY NEED a plant patent, but you also need more than that. Let’s talk about what your business is about. Are you selling clones to nurseries who will propagate and sell more clones to other people? Then you need a plant patent AND a license agreement with that nursery requiring them to pay you for every clone they make and sell.

There are other ways to do this, but you can’t just rely on a patent and you really can’t sustainably be in the clone business without a plant patent AND some meaningful, well-crafted license agreements. Get professional help. I know a guy.

If you are only selling harvested flower or extracts and you do all your own farming and you are super careful with every last bit of your propagating material, then you could get by without any IP protection. In that case, if you chose to get IP protection if would be a form of insurance. You could have plant patents to protect your genetics in case someone were to take a cutting and start competing with you.

And if you wanted to be extra careful, you could get a utility patent to claim the same genetic line more broadly. This IP approach would be all about having recourse if your efforts to control the physical material were to spring a leak somewhere. We all know this can happen, which is exactly what insurance is for.

Think it Through – Make a Plan – Get Help

There are many variations on these three main approaches to reproduction and getting paid. Whatever your business model, there will be an IP approach that can help protect what you’re trying to do; and there are others that could be pointless. There is definitely not a one-size-fits-all solution in plant IP, especially with a plant like Cannabis that can be propagated via seeds or clones and that can be commercialized as anything from industrial hemp to craft marijuana to pharmaceutical-grade cannabinoids to who knows what else?

So think about YOUR business model and be careful with YOUR genetics and then — when you need some help putting it all together — get some help. Like I said, I know a guy.

June 5, 2019/2 Comments/by Dale Hunt

NONE: That’s How Much DNA Sequence You Need to Submit A Plant Patent Application

Genetics, Grow Your Business, News, Plant Breeding, Plant Patents, Utility Patents

THE PHYLOS FIASCO WAS A WAKE-UP CALL TO BREEDERS

DNA Is Not Required For Patenting — Never Has Been

In the wake of the Phylos controversy, many are wondering about the need for DNA sequence information in patents. That’s a complicated question in some ways, because the answer has some layers and explanations to it. But, in another way, it’s a very simple question. So let’s start with simple: how much DNA sequence information is really required for a plant patent application? NONE. ZERO.

Don’t believe me? I have filed hundreds of plant patents in the United States — at least hundreds — and extending that to the corresponding international plant breeders’ rights applications, I have filed thousands. NONE of them required any DNA sequence information; all of them were allowed without any.

There is a historical reason for this, of course. The legal systems that were created for granting intellectual property for plant cultivars came long before DNA sequence information was even an option. Under those systems,

the way a new plant cultivar was identified and established as new was — and still is — a combination of

(a) describing how the cultivar was made (hybridization crossing followed by selection, or mutagenesis, or identification of a mutant or sport among some cultivated plants, for example);

(b) describing the botanical features of the new cultivar, especially those that make it most distinguishable from the closest known cultivars; and

How Did This Happen, and What Now?

So, to this day, it is routinely possible to file and obtain allowance of a plant patent or international plant breeder’s right registration without any DNA information. But the Cannabis community has become accustomed to submitting samples for DNA analysis, either to Phylos or someone else. Why is that? It may be a combination of a few things:

good marketing by Phylos;
a general curiosity about where each strain* of Cannabis fits in relation to every other strain, which curiosity was very well-aligned with Phylos’ marketing;
a misunderstanding that DNA sequence information does not provide any kind of intellectual property protection; and
a misunderstanding about the availability and relative simplicity of genuine patent protection for many of the strains that were submitted for DNA testing.

This blog is not intended to discourage anyone from getting DNA information; it is relatively inexpensive and can be quite useful. However, it does not — by itself — provide any kind of intellectual property protection. Meanwhile, filing for IP protection in the form of a plant patent or a utility patent does provide protection and does not necessarily require any DNA sequence information.

The Easiest Comparison Ever

Another reason to weigh the relative importance of IP protection versus DNA sequencing is, perhaps, best posed via the following thought problem:

Suppose I put “Patent Rights” behind one door and “DNA Sequence” information behind another door. Without any special education on your part (just based on what you already know from living in the world, hearing the news, watching TV and movies, etc.) see if you know the answer to this:

Behind Door #1 is something that you can lose if you don’t act within a limited window of time and that will expire within about 20 years never to be recovered but that, if you handle it correctly, can have tremendous value to you or your business.

Behind Door #2 is something that will never significantly change. You couldn’t change it if you tried. You couldn’t hide it if you tried. If someone is good enough at their techniques, they could detect it and reveal it 10,000 years from now from a single seed found inside the frozen stomach of a mountain climber caught in an avalanche.

OK, which one refers to patent rights, and which one refers to DNA sequence? Which one should you be quick and careful about protecting first, and which one will still be there when you need to prove in court that someone stole your genetics? Easy, right?

Is DNA Information Worthless? No — It’s Great

So why, if you can afford both, should you still get the DNA sequence? Does it add any value to your patent application or to your business strategy? Absolutely. That’s why at the beginning of this post I said the answer was both complicated and simple. The simple was that you definitely don’t need it. The complicated is that there is more to it than that.

Even though the DNA sequence will always be there and will always be the same, it’s nice to be able to show — right from the start — that it’s yours and that it corresponds to the plant cultivar (the strain) that you are patenting. And with Cannabis, unlike with some kinds of plants people patent, it may be that the botanical description doesn’t easily distinguish one cultivar from other similar cultivars. So, DNA differences — if they are known and can be pointed out — can help simplify the patenting process.

Depending on the situation, the DNA information — while absolutely not required — could streamline the examination and make it easier.
In addition, having in the record in a patent file certain DNA “markers” most likely to be used in a test could simplify the process of enforcing the patent when it becomes necessary to stop an infringing plant cultivar from being imported or sold. If a quick test could show that the infringing plant had all of the same markers as displayed in the patent itself, this could be persuasive to customs officials, for example. So, while this would never be required for patentability, it could be highly convenient for a patent owner.

Make Educated Choices if You Have to Choose

These are just a few examples of why I would never discourage a client from getting DNA information if it would not delay their moving forward with patenting their valuable Cannabis cultivars or other plant cultivars. But if you have any valuable plant genetics and you are deciding whether it is more important to get a DNA analysis or pursue IP protection, go back and think about Door #1 and Door #2. The entire Cannabis breeder community seems to have gotten caught up in a mythology about the benefits of DNA sequence information and the evils or unavailability of patents, and this has been very much to their detriment. Plant breeders need to start protecting themselves and their strains now.

Making Decisions – Ballpark Budgets

Of course, every breeder has to make hard decisions about budgets — when and how much money to spend on protecting a strain. Here are some suggestions about how to do that:

If you think you have something special that will have commercial value for more than just a few seasons, the most important thing to do is to not release the genetics (seeds OR clones) to anyone before you file for patent protection.
Your cheapest option for patent filing is a provisional patent application which will only cover you for the first year. After that first year, you will need to decide whether you’re going to go forward with a “real” patent application and what kind. But a provisional application has the lowest filing fees and keeps your options open to file either a plant patent application or a utility patent application or both. Here is an article about what plant patents cover, and this is an article about what utility patents on plants cover.
It is hard to be precise about budgets, but some ballparks to help you make decisions are as follows:

Less than $1,000 – the best option is to keep personal control over the propagating material, only ever sell flower, and spend the “protection budget” on DNA sequencing.
Less than $5,000 – the best option may be to self-file a plant patent. Check plantlaw.com where we will soon be posting forms enabling you to self-file a Cannabis provisional patent application and providing instructions for self-filing a plant patent.
Less than $10,000 – the best option is to file a plant patent through an attorney. Start with a provisional because (a) it gives you a year to assess the market acceptance of your strain; (b) it delays your costs; and (c) gives you an extra year of patent term.
More than $10,000 – the best option is to file both a plant patent and a utility patent through an attorney. The cost will definitely exceed $10,000 but will be spread over two or more years as the applications progress through the Patent Office. You can also pursue International Protection if desired.

Look for another post soon with more information on filing options. For now, focus on today’s message. It’s time to rethink the relationship between DNA and patents covering plants.

*strain – The Cannabis community has a fascinating relationship with the word “strain” which is even more nuanced than I acknowledge in this blog. But it might be worth reading anyway.

May 7, 2019/3 Comments/by Dale Hunt

Cannabis IP – Why the USPTO is Friendly to Patents and Hostile to Trademarks for Cannabis

Trademarks, Utility Patents

FICTION AND FACTS ABOUT CANNABIS & THE USPTO

A Juicy Conspiracy Theory That Doesn’t Want To Die

Maybe you have heard conflicting and confusing stories about Cannabis intellectual property (IP) and the federal government. Maybe they don’t make any sense or are even hard to believe. There are certainly some strange stories out there.

One of my favorites is a conspiracy-sounding story/question I actually hear and have to disprove quite frequently. It goes like this: The US government holds “The Patent” on Cannabis and that’s why nobody else can patent it.

Friends, that’s not correct; not even close. The kernel of truth in this story is that there are several dozen Cannabis-related issued patents and patent applications that list the United States government as owner or co-owner. In these patents and applications, research was done at some government agency – most commonly the Department of Health and Human Services, but also at Energy, Agriculture and even the Navy – and, in someone’s view, the research ended up being worth patenting. So, these approximately 50 patents and applications are among the now-nearly 11,000 such Cannabis-related patents and applications in the MJPatentsWeekly.com collection. So much for the government-monopoly myth;

it’s a myth, plain and simple. Now you know… tell your friends.

Here’s a True Story That Is Puzzling At First

But here’s a strange story that really is true: The single government agency in charge of granting two major kinds of federal IP protection – the United States Patent and Trademark Office (USPTO) — treats Cannabis in completely opposite ways when it comes to patents vs. trademarks. That might seem crazy, irrational, maybe less believable than the government monopoly story I just debunked in the previous paragraph; however, it’s true and there’s actually a reason so simple that this won’t be a very long post.

As demonstrated above, the USPTO loves Cannabis patents. It has been granting Cannabis-related patents since the 1940s at least — if you don’t believe me, go to MJPatentsWeekly.com and search words such as abrading or marihuana (with an ‘h’). Those will take you back to some old patents. But try filing a trademark application for anything that hints at a connection with a real Cannabis product and wait for the 99 questions you will get from the trademark examining attorney.

So why this big difference in treatment? It’s actually simple: it’s a matter of the very different laws that define the requirements for getting a patent vs. those for getting a trademark. And, when the USPTO applies those laws as written, these two extremely different outcomes follow.

Patents are For Inventions that Are New and Not Obvious – That’s It

The patent statute is quite clear in defining what it takes to get a patent. Without getting lost in a lot of other requirements irrelevant to this comparison, the key requirements are that, when someone claims to have invented something, the patent examiner’s job is to compare the claimed invention to what was known before (referred to as the ‘prior art’) and determine whether the claimed invention is new and whether it is obvious. If the invention is new and non-obvious, it qualifies for a patent. Notably, the examiner is not in charge of asking whether it is 1) safe, 2) legal, 3) free of other people’s patent rights, 4) clear of any regulatory hurdles, 5) environmentally friendly, 6) politically correct, etc. … you get my point.

Trademarks are For Goods and Services used Commercially Across State Lines (Legally, That Is)

In contrast, the trademark statute has a very different requirement, because federal trademark rights accrue from ‘use in commerce’ – this means use in commercial activity across state lines. You can probably tell where this is going…so long as Cannabis is federally illegal, it will be impossible for ‘use in commerce’ to occur; therefore, it will be impossible for federal trademark rights to accrue. Thus, it is simply not possible for something that cannot legally move across state lines to qualify for a federal trademark. Can’t happen. Period.

So, to put it simply, this isn’t a matter of trademark examiners being mean while patent examiners are nice. It’s merely a matter of logical/legal impossibility in one case (trademarks) vs. issues of illegality being irrelevant in the other case (patents).

So whether that myth about the government conspiracy to “own the MJ patent” will ever die off or not, hopefully this patent/trademark paradox finally makes sense. And it doesn’t seem to stand any chance of changing until the laws change that govern movement of Cannabis across state lines.

February 11, 2019/0 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

February 1, 2019/4 Comments/by Dale Hunt

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Cannabis IP – Why the USPTO is Friendly to Patents and Hostile to Trademarks for Cannabis

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