Protection and Commercialization
of Plant Varieties Throughout the World
U.S. Patent Rights
International Protection
Commercialization
Protection and Commercialization
U.S. Plant Rights
The Plant Patent Act protects asexually reproduced (e.g., by cuttings, grafting and budding) plant varieties
In detail…
The United States is unique in having two separate intellectual property systems for plant varieties. Plant Patents are granted by the U.S. Patent and Trademark Office under the Plant Patent Act, or PPA, and are available only for asexually propagated plants. Plant Variety Protection Certificates are granted by the U.S. Department of Agriculture under the Plant Variety Protection Act, or PVPA, and are available for seed-propagated and tuber-propagated plants. In addition, the USPTO also grants traditional Utility Patentsfor plant-related inventions, which in some cases can cover plant varieties without regard to their mode of propagation.
PPA: The Plant Patent Act protects asexually reproduced (e.g., by cuttings, grafting and budding) plant varieties, which are not tubers. A patented plant must differ from known plants by at least one distinguishing characteristic which is more than that caused by different growing conditions or fertility. A plant patent is limited to one genome of the plant, so that mutations or hybrids would not be covered in the patent, but would be separately patentable. Plant patents expire 20 years after the filing date of the application for the patent. A patentee may pursue civil infringement remedies in Federal Court.
Patent Act: Utility patents under non-Plant Patent Act law can be granted for plants, seeds, plant varieties, plant parts (e.g., fruit and flowers), and processes of producing plants, plant genes, and hybrids. As with other patents, a variety sought to be patented must be new, nonobvious, and have some utility, among other things. Civil infringement remedies are available in Federal Court.
Plant Patents and Utility Patents provide exclusive rights for 20 years from the date of filing. PVP Certificates provide exclusive rights for 20 years from the date the certificate is granted. For trees and vines, the PVP term of protection is 25 years.
Utility patents have more stringent requirements for applications than plant patents, but generally offer broader protections than plant patents. In particular, whereas a plant patent has only a single claim that defines the scope of the patent, a utility patent can have multiple claims, each addressing different parts of the plant or ways of using the plant that are disclosed in the specification of the patent. Also, utility patents are available for both sexually and asexually reproducing plants.
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In detail…
Most countries that have a system for intellectual property protection of plant varieties are members of UPOV (Union internationale pour la protection des obtentions végétales), an international convention aimed to harmonize, among member states, the standards, requirements, and scope of protection available. Both sexually propagated and asexually propagated plants are covered under the same system. Rights conferred are usually referred to as Plant Breeders’ Rights (PBR) or Plant Variety Rights (PVR). European Community Plant Variety rights (CPVR) are administered by the Community Plant Variety Office (CPVO) under UPOV.
UPOV: The convention was adopted in Paris in 1961 and was revised in 1972, 1978, and 1991. Currently there are 75 members.
The European Union, through the Community Plant Variety Office (CPVO), and the African Intellectual Property Organization (AIPO) provide regional systems of registration of plant varieties.
UPOV registrations provide exclusive rights for breeders and owners of plant varieties without regard to whether they are propagated sexually or asexually.
There are certain interesting exemptions to infringement. For example, it is not an infringement to propagate privately and for non-commercial purposes, nor for experimental purposes. Also, it is not an infringement to use a registered variety in the development of other new varieties (except for “essentially-derived varieties” as discussed below). Further, it is not an infringement for a farmer to save seed from one harvest of a legitimately obtained, protected variety, sufficient to replant the farmer’s own holdings. Basically, a farmer can purchase a registered variety once, harvest seed of that variety and replant such harvest the following season without infringing, without infringing, but the farmer may not propagate the seed in order to sell it to other farmers to plant their own fields.
An essentially-derived variety is one that is derived from a registered variety or that requires the repeated use of the registered variety for its generation, and whose differences from the original variety, while clear, are all based on the “act of derivation” such as genetic transformation, selection of a somaclonal variant, selection of a variant individual, selection of a natural or induced mutant. Propagation of an essentially-derived variety without permission of the owner of the original variety.
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Commercialization
Currently Cannabis is legal or at least decriminalized in over 50 countries
In detail…
Obtaining intellectual property protection for a plant variety or a business based on plant genetics is only part of the challenge. It is also important to have a strategy for commercializing the plants in countries where they may be grown and/or sold. Each country’s strengths and weaknesses in licensing, enforcement, grower community, import/export issues, and other requirements must be understood and considered. Some commercialization strategies can work even in countries without a good IP system. When plant IP protection is coupled with a sophisticated approach to branding, your chance of long-term success in multiple markets is greatly increased.
International Commercialization of Cannabis:
Currently, Cannabis is legal or at least decriminalized in over 50 countries, and almost all of these countries are members of UPOV. That is not to say that all of those countries offer plant variety protection for Cannabis varieties, but it is predictable that such will be the trend. Plant breeders with valuable Cannabis strains should plan ahead for robust international commercialization strategies to optimize the protection and value of their proprietary genetics. This involves many of all of the following:
– controlling access to propagating material
– documenting dates of first sale or other commercialization in each country
– planning release into different countries based upon availability of IP protection and suitable commercial partners
-timely filing of priority UPOV applications in at least one available jurisdiction to preserve the opportunity to file in other UPOV members during the novelty period
– understanding alternatives to IP protection in countries with desirable markets
– obtaining regular updates on changes in the law regarding legal markets as well as available IP protection.
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Dale’s Blog
- Don’t Let the Term “Strain” Strain You November 10, 2021
- Cannabis Patents 2000 – 2019: Trends Following Legalization January 20, 2020
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Disclaimer
The statements and views expressed on this site are solely those of Dale Hunt and do not reflect those of his colleagues or clients. They are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.