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.
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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*:
- Plants having the same genotype as the seeds or tissue on deposit as accession #ABC at XYZ depository.
- Progeny of the plants of claim 1, or any part of said progeny.
- Seeds of the plants of claims 1 or 2, and progeny thereof, and any part of said progeny.
- Harvested material or extracts from any parts of the plants or seeds of any of claims 1-3.
- A medicinal or recreational product made from any of claims 1-4.
- A vape cartridge containing an ingredient from claims 4 or 5.
- 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.
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.