IP protection of plant-related inventions and consumer perspective.
Developing new plant varieties either through breeding or genetic engineering is a long process that requires patience, skill and steady financial influx. Every year, a greater number of plant breeders and scientists are seeking to secure intellectual property rights to their “inventions” and “discoveries”. The importance of getting your intellectual property rights timely secured cannot be understated. IP protection greatly affects stability of product market value, allows to recover and further attract research investments, and to capitalize on licensing. Current overview discusses how plant breeders and scientists can secure plant-related intellectual property rights through patents and trademarks and how these rights must be observed on the consumer side.
In this day and age, new plants are created in two different ways: conventional breeding and genetic engineering. These methods differ in both process and generated product. Genetic engineering enables scientists to insert genetic material from one, often not related, species into another in order to create an organism that possess certain desirable traits. For example, an antifreeze gene from Arctic flounder was once introduced into tobacco and tomato plants.
In contrary, traditional breeding entails development of new plant variety through selection, thus achieving expression of genetic material already present within species. Conventional breeding employs naturally occurring processes of plant sexual or asexual reproduction to achieve desired outcome and permits movement of the genetic material between different varieties of same species, closely related species or closely related genera.
Plant IP rights in the U.S. can be pursued in three ways: Plant Patent (35 USC 161), Utility Patent (35 USC 101) and Plant Variety Protection Certificate (under Plant Variety Protection Act; 7 USC 2321-2582). Each approach differs in eligibility requirements and granted scope of protection.
A patent holder has an exclusive right right to prevent or stop others from commercially exploiting the patented invention. It means that the invention cannot be commercially made, used, distributed, imported or sold by others without the patent owner's consent within a country covered by the patent. While a Plant Patent can be described as patent on the plant as “whole”, utility patent is more often sought for the plant related invention that focuses on a particular feature of the plant, such as plant gene or genome into which it is inserted or method of producing the genetically modified plant. Let’s consider eligibility requirements for each.
Plant Patent
35 USC 161 provides: “Whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other that tuber propagated plant or plant found in uncultivated state, may obtain patent thereof…”
Let’s break it down to pieces.
“invents or discovers” requirement limits patent protection to plants that were created from the inception of human activity and by inventor him/herself. If plant was “discovered” the discovery should have taken place in cultivated state (i.e. farm field, garden, nursery, home etc.).
“distinct and new variety of plant…”. In order for the plant to be considered “new” it must possess at least one novel and distinguishing characteristic that makes it unique, though it doesn’t necessarily have to be non-obvious. Term “plant” in this context does not include bacteria but encompasses algae and micro fungi.
“asexually reproduces” means to be reproduced in a way other that from a seed. Acceptable ways would include rooting cuttings, apomictic seeds (asexual seed formation), division, layering, runners, tissue culture, grafting and budding, bulbs, slips, rhizomes, corms and nucellar embryos. Asexual reproduction yields an exact genetic copy of the parent and is required in order to prove the stability of the product. This ensures that the specified features of the plant do not change through the process of reproduction. The mere ability of a plant to reproduce by seeds (sexually) does not preclude patentability under this title.
Only plants and “newly found seedlings” discovered in cultivated state are eligible. Plant discovered in wild is not patentable.
“tuber propagated” are excluded from the scope of patent protection as they are propagated by the same part that used/sold as food. For example, potato and Jerusalem artichoke.
Thus, to be eligible for the Plant Patent, an inventor has to personally make and invention/discovery of the plant in cultivated state and succeeded in asexually reproducing it. Plant Patent has only one claim (to the plant as “whole”) and somewhat relaxed specification requirements.
Filing a Pant Patent application costs between $360 and $720. The examination fees for a plant patent are $170. Including these costs, legal fees, and other charges, a plant patent typically costs between $4,660 and $7,620. Plant Patent application can claim priority from an application for patent breeder rights filed in WTO member country or in foreign UPOV Contracting party. In certain circumstances, priority to the national provisional application can be claimed.
A Plant Patent expires 20 years from the filing date of the patent application.
The protection under Plant patent enables patent holder to stop others from asexually reproducing, using, selling or importing the patented plant in the U.S. without a license. However, Plant Patent protection does not inherently exclude others from using patented plant in breeding programs.
The infringement of a Plant Patent would only occur if the plant in question or any of its parts were asexually reproduced from the original patented variety. Sexual reproduction (from seeds) on other hand is allowed. In other words, the infringing plant must be a genetic clone of the original. A plant that has the same appearance or use does not amount to the lawsuit. Similarly, a plant derived from a sport or a mutant or seed is unlikely to be of the same genotype as the original plant, and thus would not be covered by the Plant patent to the original plant. Actually, a plant derived from such sport or mutant may itself be patented.
As a consumer, you would know that plant is patented if “PP” (Plant Patent) following by the patent number is shown on a plant label. You could also see “PPAF”, that stands for Plant Patent Applied For. It means that Plant Patent application has been filed and patent is currently pending. If ever in doubt, you can search patents through USPTO website or Google. If a plant is patented, a license is required from the patent holder to make cutting of the plant, even if you planting it in your own backyard.
Utility Patents for Plants
Supreme Court decisions in 1980 (Diamond v. Chakrabarty) and 2001 (J.E.M. Ag Supply, Inc. v.
Pioneer Hi-Bred Int’l Inc.) enabled granting utility patents for new man-made and sexually reproduced plants or plant’s elements. Statutory authority for the utility plant patents falls under 35 USC 101 that provides: “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter or any new and useful improvement of thereof, may obtain a patent”.
In contrary to Plant Patents, Utility Patents can be granted to plants reproduced either sexually or asexually and have a broader scope of protection. These patents are often sought in the genetic engineering field and issued for distinctive features of plants such as genes, seeds, fruit, plant-derived chemicals, therapies and even food product. Multiple claims are allowed and may be directed not only to the distinctive characteristics of a plant “as whole”, but as well to the plant materials, processes and methods used in the creation of new plant varieties. Accordingly, Utility Patent on the plant gene, for example, would have much broader scope than Plant Patent. It would avail patent holder of an exclusive right to any product containing patented gene. Thus, any plant that encompasses this gene is rendered protected and would constitute an in infringement if used, made, imported or offered for sale in the U.S.
In order to be eligible for the Utility Patent plant or plant-related invention must have utility (be useful), be novel and non-obvious. Utility Patent must meet stricter filing requirements and harder and longer to obtain. However, the granted protection is broader and stronger.
A plant protected by a Utility Patent can be infringed if it is reproduced either sexually or asexually. There is also no experimental use exception and patent holder has a right to stop others from using patented varieties in breeding programs. The patented seeds can be used to produce commercial crop only for one season and saving part of crop for re-seeding in the following season would constitute an infringement. Of course, a farmer is free to sell a crop grown from such seed as food, but cannot offer a crop for sale as seeds.
Filing a Utility Patent with lawyer fees will usually cost between $10,000 and $15,000 depending on the complexity of invention.
Utility Patent (filed on or after June 8, 1995) expires in 20 years from the date on which the application for the patent was filed in the U.S. or if the application contains a reference to an earlier filed national or Patent Cooperation Treaty (PCT) application, from the date the earliest such application was filed. Foreign and provisional priority does not count towards the patent term. As with plant patents, when the plant patent expires, the subject matter of the patent goes to the public domain, meaning anybody is free to use it.
If you are planning to file either Plant and/or Utility patent application, it is important to keep in mind that selling, exhibiting, describing an invention (plant or any other plant related subject matter) in printed publication, on the web or making any information about the invention available to the public in any way more than 1 year prior to the filing the patent application in the United States will result in the invention becoming unpatentable under AIA 35 USC 102(a)(1) provision which equally applies to the inventions where protection is sought under Plant or Utility patent. Utility Patent is identified by the all numeric number on the packaging or marketing materials of the protected product. For example: Patent Number: 5,480,789 (covers process of producing blue roses) or US005480789 (“US” before the number indicates that this particular patent grants protection in the United States). If a patent application is pending, a “patent pending” note is usually included often followed by the patent application number.
Plant Variety Protection Certificate
IP protection for sexually reproduced or tuber propagated plant varieties (excluding fungi and bacteria) was available under the Plant Variety Protection Act (PVPA) since 1970. It is administered through the U.S. Department of Agriculture and set forth in 7 USC 2421, 2422, and 2541. Agricultural Improvement Act of 2018 has broadened the scope of the PVPA further including asexually reproduced plant varieties.
In order to satisfy eligibility requirements, plant variety has to be new, distinct, genetically uniform and stable through successive generations. Being “new” entitles that propagating or harvested material of the variety not to be sold or otherwise disposed of to other persons in the United States for purposes of exploitation of the variety more than one year prior to the date of filing, or more than four years overseas (six years for a tree or vine). Plant variety that is clearly distinguishable from any other publicly known variety is considered to be “distinct”. In addition to morphological characteristics of the plant itself, some useful commercial characteristics, for example, processing parameters (milling, baking etc.) may also qualify a plant to be “distinct”. The variety must be “uniform”, in the sense that any variations are describable, predictable, and commercially acceptable. Finally, a variety must be “stable”, meaning that when being reproduced, it remains unchanged with regard to its essential and distinctive characteristics within a reasonable degree of commercial reliability. Only a plant breeder or the successor in interest of the breeder may seek a Certificate of Plant Variety Protection.
Similar to patents, Plant Variety Protection Certificate gives the breeder the right to exclude others from reproducing, selling, marketing, importing/exporting or using it in producing (as distinguished from developing) a hybrid or different variety. However, multiple exemptions significantly limit the rights of the Certificate holder and provide weaker protection compared to patents. Additionally, plant breeder rights do not cover processes and methods that were employed for the production of such varieties, that could be covered under the utility patent.
The PVPA's research exemption allows for usage and reproduction of a protected variety for plant breeding and research. Thus, it does not preclude third party breeders from using the protected variety for creating new varieties or marketing them. Additionally, farmers are allowed to save and replant seeds from protected varieties on their own farms without breeder prior authorization. Selling or exchanging seeds with other farmers for propagating purposes constitutes an infringement.
The Certificate term runs for 20 years from the issue date for most crops, and 25 years in the case of a tree, shrub or vine. Total costs to obtain the Certificate amounts to $5,150, which is significantly lower, compared to that of patent protection.
Plant and seed protected under PVPA are usually marked as PVR (Plant Variety Rights) after the name of the cultivar. The "Unauthorized Propagation Prohibited'' or "Unauthorized Seed Multiplication Prohibited'' warnings on the tag or packaging may also be included.
Plant Trademarks
Plant trademarks is another legal tools for enforcing IP rights related to the naming and use of plants.
Trademark is a legal right to a monopoly on a name or symbol affiliated with a particular plant cultivar, but not to the actual plant itself.
Note how the above Weigela plant is marketed under registered (indicated by ® symbol) trademark name “Wine & Roses” by the Proven Winners nursery. The US Plant patent number (USPP10772) is also included.
Trademark name supposed to be different from the cultivar name and usually selected to be used in the commercial/marketing content. Symbol “™” indicates that the preceding mark is unregistered trademark. It doesn’t give the owner any monopoly on the name or symbol. Trademark registration is administered by USPTO. Once registered, the symbol ® is displayed following the trademarked name of the plant and no other party is allowed to use the name in similar commercial content without paying trademark royalty.
Selling the identical plant using its cultivar name or another marketing name, would not constitute an infringement under the Trademark Law. Additionally, trademark holders usually don’t license growers to use their registered name for a plant unless growers purchase small plants for up-potting from them directly. They also often require licensed growers to buy their branded containers for plant sales. Nursery is required to properly reflect patent numbers and registered trademark names for licensed plant varieties it sells. Commercial production of branded plants without proper trademark tags, containers and/or patent information labels is prohibited as well as the commercial production of non-branded plants in branded containers.
Contrary to patents, trademark never expires. Hence, when patent term expires, licensees that don’t have to pay for propagating rights any more are still not able to sell the plant under the name everyone recognizes without paying the trademark royalty to the owner.
Evidently, plant trademarks and patents are important IP tools and go hand in hand providing cumulative benefits to the plant owners. Aforementioned protection strategies are not exclusive and often the same plant is protected under both Plant Variety Protection Certificate and Plant Patent. On top of that, the same plant (i.e. it’s genetic modifications of methods involved in production) may be protected by Utility Patents in addition to Plant Variety Protection Certificate and/or Plant Patent. Having a marketed plant name trademarked is a right decision to ensure that some royalties will still flow in once patent term elapses. The most appropriate protection combination is decided case-by-case based on the particular business strategy and plant invention.
On the consumer side, as we all get very excited about approaching planting season, it is important to remember to avoid violating Patent and Trademark Laws and stay out of trouble by reading the labels and refraining from propagating patented plants without owner’s permission.
By Irina Pomestchenko, May 2019
We welcome you to contact us for additional information and further assistance.
Sources:
https://www.ams.usda.gov/sites/default/files/media/Plant%20Variety%20Protection%20Act.pdf
https://www.uspto.gov/web/offices/pac/mpep/mpep-1600.html
https://www.govinfo.gov/content/pkg/USCODE-2010-title7/html/USCODE-2010-title7-chap57.htm
https://academic.oup.com/jxb/article/63/3/1069/473047
https://www.upcounsel.com/how-much-does-a-patent-cost
https://www.upcounsel.com/plant-patent
https://www.bipc.com/new-intellectual-property-protections-available-for-asexually-produced-plants
http://andyswebtools.com/uploads/4534/trademarked_and_patented_plants.pdf
https://courses.lumenlearning.com/boundless-biology/chapter/asexual-reproduction/
Image courtesy: https://geneticliteracyproject.org/2018/07/03/power-of-genetics-seed-industry-sees-plant-breeding-innovation-as-key-to-sustainable-agriculture/