What Should I Do When a US Plant Patent Isn’t Enough?

cannabis, pot, weed

Perhaps you read the blog post about copyrighting a plant variety (via a patent) and thought, “If only that were enough.”  Some kinds of plants cannot be propagated by cloning on a commercial scale.  And there are some sets of traits that can be easily transferred by seed propagation, or transferred to other lines with one or more straightforward crosses.  So in these cases, a form of protection that only prohibits direct copying just can’t fully protect what is special about the cultivar.  In other words, a plant patent isn’t enough.  This is because US plant patents only cover asexual propagation – direct cloning of the original plant.  If the commercial value can be derived without cloning, then a plant patent won’t protect the main commercial value.

Fortunately, there are two approaches to filling this gap in protection:

  1. USDA Plant Variety Protection is generally the most inexpensive and direct but is not available for all genera of plants.
  2. US Utility Patent Protection is also available and, when handled properly, need not be unduly expensive, complicated, or over-reaching.

USDA Plant Variety Protection

When seed-propagated plant cultivars need to be protected, the available form of protection in the US is a USDA Plant Variety Protection (PVP) Certificate.  The application process is relatively straightforward – it requires making a seed deposit and filling out some forms asking questions about the genealogy and selection of the cultivar, its commercialization, traits, and other relevant information.

Examination, known as “DUS Testing,” is done to determine the cultivar’s distinctness from other known varieties, the uniformity of the plants within the cultivar, and the stability of the traits of the cultivar across multiple plantings or generations.  When all the forms are in order and the DUS examination is satisfactorily completed, a PVP Certificate is granted.

The Cannabis problem and the solution:  There is a problem if you’re a Cannabis breeder.  While the USPTO is happy to examine applications and grant patents covering Cannabis varieties or other cannabis-related inventions (go to MJPatentsWeekly.com to see them all), the USDA is currently not allowed to accept seed deposits of any kind of Cannabis, whether hemp or psychotropic species/hybrids/cultivars.  Therefore, if you are trying to protect a seed-propagated Cannabis cultivar, the USDA PVP approach is not available.  It will be available once legislation is passed authorizing the USDA to accept Cannabis seed deposits; however, until then, Cannabis breeders whose varieties cannot be adequately protected with a plant patent really only have one choice – to pursue broader protection with a US utility patent.

If you need to protect against both sexual and asexual propagation of a valuable cultivar, your only choice in the US, for now, is to obtain a utility patent.  The good news is that a cultivar-specific utility patent does not need to have all of the negatives that are often associated with utility patents in the minds of many plant breeders and members of the long-term Cannabis community.  What are those negatives?

  • High cost,
  • extreme complications in the preparation/disclosure process, and
  • patent claims so broad that they seem to risk alienating the goodwill of others in the community.

Granted, not everyone is equally concerned about these issues; however, I hear about them often enough that they are worth addressing here.

Utility Patents – They Can Be What You Want Them to Be

Utility patents are often associated with high cost and complexity.  In the Cannabis industry, utility patents have, to some extent, also become associated with a “gold-rush” type of over-reaching for claim scope that is more than seems reasonable.  But that approach is up to the applicant, and a focused approach to what is being sought can also greatly control the cost and complexity of the process.

If the goal is to adequately protect a single cultivar or small group of varieties sharing a well-defined set of traits while also protecting their progeny, this goal can be achieved very reasonably with a utility patent.  While a plant patent can only have one claim and can only protect against asexual propagation, a utility patent can have multiple claims, such as

  1. The Cannabis cultivar known as XYZ, deposited under accession number ABC.
  2. Seed, plants, plant material, plant extracts, or a whole plant of claim 1 or of any progeny thereof.
  3. A method of plant propagation, comprising crossing a plant of claim 1 or 2 with another Cannabis plant, and recovering seed therefrom.

These are, of course, only simplified examples of the kinds of claims that could be written and are designed to illustrate how a utility patent can cover more than a plant patent.

There are several statutory requirements for patentability, but the key ones at issue here are that

  1. an invention must be new and
  2. the application must adequately describe the invention and
  3. enable the public to make and use it once the patent has expired.

The requirement for novelty (1.) would come from the fact that the cultivar XYZ did not exist prior to being bred and selected by the inventor.  The requirements for adequate description and enablement of the invention (2. & 3.) are met by making the deposit.  So, if all that is claimed in a utility patent is a deposited plant cultivar and certain things closely related to it, the application can be relatively simple and inexpensive.

The Rest of the World is Different

The US is unique in dividing its IP protection for plants based on whether they are asexually or sexually propagated.  In the rest of the world, someone facing the breeding situation described at the beginning of this article would still go to one plant-variety office to file one type of application for plant-breeders’ rights.  In some countries, the breeder may also be able to apply for a utility patent.  However, in the US – and particularly for Cannabis breeders – there are more things to consider.

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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