Plant patents, trademarks, and PBR: Let’s discuss facts (part 1)

[Beta Test Team]

[I'm not sure where to put this thread, please feel free to move it if this isn't the proper place.]

I am starting this thread with lots of quoting of academic source material to try and lay a ground work for definitions and concepts, so we all start out at the same level of understanding (though some have much greater level, to be sure). I was motivated to start this thread because there is too much conjecture posted about these topics as it relates to plants and drug Cannabis in particular. It's time to separate facts from opinion.

This thread is not about whether plant patents, etc., are good or bad, so please don't discuss your personal feelings on that matter in this thread. This thread is only to collect facts and set the record straight.

I did not know much of anything about these topics, which is why I started this thread, to educate myself and hopefully help others, as well as to improve the discussion on these topics by injecting provable facts.

Please feel free to add more facts and correct anything that may be wrong, but, and this is a big but, please cite everything you may claim so we can see the source of your claims. If you’re just going to add your opinion without citing the source for that opinion please don’t bother posting.

NOTE: Part 1 is US based. Thread part 2 will be focused on UPOV Convention and TRIPS Agreement.

NOTE: These are great starting references to read:
- https://pennstatelaw.psu.edu/_file/aglaw/Plant_Patents.pdf
- http://www.uspto.gov/patents-gettin...ications/general-information-about-35-usc-161


These are my initial take-aways from reading the above and following works:

- The pollen or seeds from a patented plant are not restricted by the patent, so a grower or other breeder can use them as they see fit, for example, to grow and breed as they see fit.

- A plant patent only protects that specific plant (genotype), so if a different breeder created a variety with the same chemical makeup as the patented plant (or the same leaf color, for example), they aren’t infringing upon the plant patent holder. It’s only when it’s a utility patent that the copying breeder in this case would be infringing upon the patent. To infringe upon a plant patent the actual plant (genotype) is all that matters.

- A plant variety protection certificate seems to provide more protection than a plant patent, as it also covers sexual reproduction. So a different breeder can't use the protected plant to create new hybrids, except under the "research exception." While plant patent is only about asexual reproduction. A big apparent difference here is the variety must be 'true breeding,' while a plant patent doesn't make such a requirement.

- A trademarked plant may be cloned and used as the grower or a different breeder sees fit, but the grower or breeder may not use the same name as the trademarked name.

- In terms of Cannabis plants, I spoke with the "office of patent legal administration" at USPTO and I was told they will grant patents (plant and utility) for drug Cannabis plants.


From http://www.uspto.gov/patents-gettin...eneral-information-about-35-usc-161#heading-5

- Grant of a patent for a plant precludes others from asexually reproducing or selling or using the patented plant. A plant patent is regarded as limited to one plant, or genome. A sport or mutant of a patented plant would not be considered to be of the same genotype, would not be covered by the plant patent to the parent plant, and would, itself, be separately patentable, subject to meeting the requirements of patentability. A plant patent expires 20 years from the filing date of the patent application. As with utility applications, when the plant patent expires, the subject matter of the patent becomes public domain.

From https://www.princeton.edu/~ota/disk1/1989/8924/892407.PDF

- Plant patents, authorized by PPA, protect plant varieties that have been asexually reproduced, including cultivated sports*, mutants, hybrids, and newly found seedlings. They cannot be obtained for plants reproduced from seeds, tubers (e.g., Irish potatoes or Jerusalem artichokes), and wild varieties found in nature that are not asexually reproduced. Bulbs, corms, stolons, and rhizomes are not considered to be within the tuber exception. For a period of
* A sport is an individual exhibiting a sudden deviation from type beyond the normal limits of variation, usually as a result of a mutation.

- Plant Variety Protection Certificates, authorized by PVPA, provide a form of protection for new, distinct, uniform, and stable varieties of sexually reproducing plants, except fungi, bacteria, tuberpropagated or uncultivated plants, and firstgeneration hybrids. PVPA is administered by the Plant Variety Protection Office (PVPO) within the U.S. Department of Agriculture (USDA). Under PVPA, the breeder can exclude others from selling, offering for sale, reproducing (sexually or asexually), producing a hybrid from the variety, and importing or exporting the protected variety. Two exemptions limit the certificate holder’s protection: farmers may save seed for crop production, and breeders may use the protected variety to produce new varieties-the so-called research exception. Furthermore, the Secretary of Agriculture can require the certificate owner to grant licenses to third parties if it is in the public interest. The period of exclusion is 18 years (7 U.S.C. 2483(b)).

- Utility patents, issued under general patent law by the PTO, can be granted for plant inventions (35 U.S.C. 101) (8,16). Patents issued can claim plants, seeds, plant varieties, plant parts (e.g., fruit and flowers), processes of producing plants, plant genes, and hybrids. Utility patents for plants and varieties provide 17 years of protection for the owner. Chapter 3 discusses the requirements that inventions, including plants, must meet to be patentable.

From http://extension.oregonstate.edu/gardening/what-does-it-mean-when-nursery-plants-are-patented-or-trademarked

- A patent legally prevents others from reproducing the protected plant variety by cuttings, tissue culture or any other method of asexual propagation without the written authorization or licensing of the patent holder. Possession of improperly propagated plants of patented varieties constitutes infringement, even if an illegal propagation was inadvertent.

- Though asexual reproduction may be prohibited on a patented cultivar, there is no regulation against using the plant in sexual reproduction. In other words, the seed or pollen from a patented variety may be used without permission of the patent holder. The offspring are free of patent regulations.

- If a plant is patented, a license is required from the patent holder in order to make cuttings of that plant, even if it is planted in your own back yard. Unlike with a copyright, there is no concept of “fair use rights” for patents in the United States.

- Trademarking is another way that the nursery industry gets recognition for its varieties, explained Altland. It’s faster, easier and cheaper than the patenting process for a nursery company and is renewable every 10 years. A trademark helps consumers associate certain varieties with a company name, much like “Big Mac” is associated with McDonald’s. Trademarking helps companies build customer loyalty.
[NOTE BY BTT: It’s not possible to get US federal trademark protection of a Cannabis variety, cultivar, or other; but state trademark protection can be an opinion in some states.]

- A trademark on a plant protects only the plant’s name, not the plant cultivar itself, as with a patent. Another person could propagate a trademarked plant, but not call it the same variety name. Examples of trademarked varieties include the popular “Wave” series of petunias.

- Unlike a patented plant, if you buy a trademarked plant, you can propagate it asexually by taking cuttings. You can even sell the propagated plants for profit, but you can’t call those plants by the trademarked name or acquire your own trademark for those same plants. You can, however, use the plant’s cultivar name if it has one (shown in single quotes) – assuming that it isn’t also patented.

From http://www.cof.orst.edu/cof/teach/a...tellectual property protection for plants.pdf

- A plant patent, like a utility patent, has a term of 20 years from the filing date of the application. However, unlike a utility patent, there is only one claim to the plant variety itself, for example, “A Bermuda grass plant substantially as described and illustrated in the specification herein”10. The claim may also recite certain distinguishing characteristics.

- Until recently (1999), a plant patent only prevented another from selling or using the whole plant. However, 35 USC §163 has been amended in the most recent Congress so that the grant includes “the right to exclude others from asexually reproducing the plant, and from using, offering for sale, or selling the plant so reproduced, or any of its parts, throughout the United States, or from importing the plant so reproduced, or any parts thereof, into the United States”.

- First, for asexually produced plants, a plant patent may be useful where it is difficult to meet the enablement requirement of a utility patent. Second, plant patents and PVP certificates only cover the plant variety and plants derived from the variety; a utility patent may cover similar plants, method of obtaining the plant, and method of use. Therefore, whenever possible, seek a utility patent.

- The deposit of seeds to a recognized depository, such as the Agricultural Research Service Culture Collection, also known as NRRL, made in connection with a utility patent must be made publicly available after issuance of the patent; seeds deposited in connection with a PVPA are generally not publicly available. Publicly available seeds make the patent easier to infringe.

- It is possible to obtain a plant patent but not a utility patent on an asexually reproduced plant that is discovered in a cultivated area. Therefore, if such a plant variety is actually isolated from a cultivated area, a plant patent would be the only protection available.

From http://www.cof.orst.edu/cof/teach/a...tellectual property protection for plants.pdf

 

[Beta Test Team]

So all in all, the plant patent while useful, isn't much better than well written contract between the plant breeder and the customer. It's the utility patent that really gives strong protection for the plant breeder, for example, against a copying breeder trying to re-create that patented plant. And the plant variety protection certificate offers protection from use of the plant for breeding by other breeders, while a plant patent does not.

Here's something I wrote in a different thread about how Cannabis breeders and some clone sellers handle this situation currently (due to patents not being possible at this time). (The source material is a IP/patent attorney who works with the Cannabis industry):

This is pretty common, where a contract stipulates the grower can't breed with or share, or in some cases even clone, the plants. In the case of not allowing even cloning the goal would be force the grower to buy clones (or seeds) for each grow.

If the breeder has the genetic 'fingerprint' of the plant it's trivial to get a test on suspect plants in terms of contract violation. How this works with the Cannabis industry, in terms of labs willing to do the work, I'm unsure.

 

[Beta Test Team]

A question I have that I haven't found the answer to yet, and I hope someone here can answer (and provide their source material):

- How does a cultivar fit into PVPA, that is, does a plant variety protection certificate consider a cultivar to be a variety?

 

[Beta Test Team]

[UPDATE: After speaking with USPTO I was told they will, in fact, grant drug Cannabis plant patents.]

It was pointed out to me that there are several(?) plant "patent in process" for Cannabis in the US, as a means to prove the USPTO will grant plant patents for drug Cannabis.

And while that may be true, there's a big difference between 'patent pending' and actually being granted a patent by the USPTO. So if anyone knows of an actual plant or utility patent for a drug Cannabis plant please post info and links if possible.

Thanks!

 

[MJPassion]

Cultivar means (culti)vated (var)iety.

Websters Dictionary

However, if those terms are used within the legal wording, a legal definition may be appropriate.
I cannot find one in Blacks Law Dictionary or Barrons Law Dictionary.

 

[Beta Test Team]

Thanks.

Cultivar and variety are defined differently according to different international plant naming systems. This is why I'm wondering how the USPTO would consider the issue. I'll likely call them tomorrow and ask, or at least send an email and ask. I strongly suspect they do consider a cultivar to be a variety in the context of their rules language.

According to the most relevant naming system, ICNCP (International Code of Nomenclature for Cultivated Plants), cultivar is equivalent to variety in the context of this thread:

"International Code of Nomenclature for Cultivated Plants"
(8th edition)
http://www.actahort.org/chronica/pdf/sh_10.pdf

Variety: Term used in some national and international legislation for a clearly distinguishable taxon below the rank of species; generally, in legislation texts, a term equivalent to cultivar. See also: cultivar and variety (varietas).

Cultivar: An assemblage of plants that has been selected for a particular character or combination of characters and that is clearly distinct, uniform, and stable in these characters and that when propagated by appropriate means retains those characters (ICNCP Art. 2.3).

 

[Beta Test Team]

Of interest about the issue of cultivar and variety, as it relates to the U.S. PVPA (Plant Variety Protection Act), is the definition of variety by UPOV (The International Union for the Protection of New Varieties of Plants). This sounds like they're describing a cultivar, as well, especially considering what the ICNCP (International Code of Nomenclature for Cultivated Plants) has to say (in the post above):

http://www.upov.int/about/en/upov_system.html#P78_3918

Plant Variety

Although the rank of species is an important botanical classification, it is clear that the plants within a species can be very different. Farmers and growers need plants which are adapted to the environment in which they are grown and which are suited to the cultivation practices employed. Therefore, farmers and growers use a more precisely defined group of plants, selected from within a species, called a "plant variety". The UPOV Convention definition of a plant variety starts by stating that it is "a plant grouping within a single botanical taxon of the lowest known rank, ..." This confirms that a plant variety results from the lowest sub-division of the species. However, to understand more completely what a plant variety is, the UPOV Convention (Article 1(vi)) defines it as:

"a plant grouping within a single botanical taxon of the lowest known rank, which grouping, irrespective of whether the conditions for the grant of a breeder's right are fully met, can be

- defined by the expression of the characteristics resulting from a given genotype or combination of genotypes,

- distinguished from any other plant grouping by the expression of at least one of the said characteristics and

- considered as a unit with regard to its suitability for being propagated unchanged;"

This full definition clarifies that a variety must be recognizable by its characteristics, recognizably different from any other variety and remain unchanged through the process of propagation. If a plant variety grouping does not meet these criteria, it is not considered to be a variety within the UPOV system. However, the definition also makes clear that this is irrespective of whether the conditions for the grant of a breeder's right are fully met and this is not, as such, a condition for determining if a variety is eligible for protection. The conditions for protection of a variety are set out in Section IV (c) of this document.

 

[Chimera]

Good for you for starting your education on the topic Beta, it's great that you are taking the time to form a basis for a discussion.

The original thread is linked below for the reader's reference and context, the conversation really starts to develop around page 4 or 5.

https://www.icmag.com/ic/showthread.php?t=298710

In regards to your question, there are no plant patents for cannabis as of this date that have been granted by the USPTO, only some under review. However, in a article I recently read a patent attorney claims the patent office seems to be treating them in the same fashion as they treat any other application.

-Chimera

 

[Beta Test Team]

Yup, and many things claimed by some people in that thread didn't turn out correct...did they, Chimera?

But please don't bring up that thread again in this thread, let's keep this thread clean. This thread is based on facts, and I'd like to keep it that way.

Do you have a link to that article about the patents? Just for the sake of this thread. And I personally would be really interested to read it. Thanks.

 

[Chimera]

I think the thread I linked is a good historical context and clearly the genesis of this one, and is a recommended read for anyone interested in the topic. I can understand why you would want to delete any memory of it though... a shame you deleted those last few posts, I never got the opportunity to read them.

No certainly not everything everyone said was correct, but I certainly stand by everything I said... as you keep digging, I assure you you'll gain more clarity and understand the points that were being made for your benefit.

If you keep looking Beta, you'll also find the article I reference above, no spoon-feedings here either though... as was stated previously, the journey of looking and educating yourself will lead to your best education, and I certainly don't want to deprive you of that educational experience.. it's looking great on you thus far, keep it up. I'm looking forward to you getting down to the nitty gritty, deep below the surface of the topic.

Enjoy your new venue, and your pursuit... the journey is half of the experience of getting to your destination!
-Chimera

 

[Beta Test Team]

Chimera, you were point blank wrong about various claims, I proved it above (see plant vs. utility patent as just one example), so give it up!

I have reported your post. You came in here and were just looking to start trouble, too bad you didn't notice your foot was in your mouth.

The posts I removed were off topic.

 

[Chimera]

Haha, nice!

You proved me wrong did you?, by bailing on the conversation and starting it somewhere else? We're not going to bring it up at your request, but there was no mention in the other thread of Utility patents by me, to reiterate again in that thread I was clearly discussing plant patents specifically, as stated ad nauseum. You've posted some cut and pastes, but are still having a little trouble with the comprehension aspect. Oh well, some things do carry over I guess.

Good for you for alerting the moderator, I'm sure they will enjoy the read. You don't have to worry though I'm not going to post in this thread anymore, it's clear you wanted to take your ball and go play a game where everybody would fall in line to the discussion you want to have, and I am happy to let you have it. Enjoy!

-Chimera

 

[hyb.0]

Chimera, you were point blank wrong about various claims, I proved it above (see plant vs. utility patent as just one example), so give it up!

I have reported your post. You came in here and were just looking to start trouble, too bad you didn't notice your foot was in your mouth.

The posts I removed were off topic.

In the interest of keeping it archived, we better quote this time.

 

[Beta Test Team]

For reference, many things Chimera claimed about a plant patent, are in fact, protections from a utility patent and PVP certificate, not a plant patent (he mixed up what protections go with a plant patent). As well about his refusal to back up his claims about Cannabis plant patents getting granted, which are still not going to be [likely] granted despite his unsubstantiated claims.

And let me take a play from your and Chimera's playbook: I won't spoon feed you the above, you will have to read my first post and figure out how you went wrong by yourself.

You hyb.0 (Hybe), didn't even try to add useful info, at least Chimera did, no matter that much of what he claimed was wrong.

I started this thread to avoid getting into this type of situation with you and Chimera. You both came here looking to start trouble. That's obvious.

[UPDATE: I was told today, Feb. 9th, by Alice at USPTO that they will grant drug Cannabis plant and utility patents. See this post for more info: https://www.icmag.com/ic/showpost.php?p=6794507&postcount=31]

 

[Sam_Skunkman]

I would maybe post more but I don't really like the confrontational attitude by the OP.
People need to stick to issues and leave personalities and ego out of it.
One thing is for sure, most here have little idea what is involved with UPOV PBR's or plant patents, utility or not.
BTW, I have talked to many US plant patent and PBR's issues lawyers that have no idea what is going on with Cannabis, they have no experience with it, zero, as the USA has no PBR's for Cannabis as of yet, and they get many of their "facts" wrong. They constantly tell me thing that are just not true. Don't believe them....
-SamS

 

[Chimera]

Well that is truly a shame Beta, I was looking forward to you educating us all.

I have to note though, for posterity, that you don't want to reference the last thread, yet continue to reference it as it suits your perspective.... now who's agenda is showing?

It's also highly ironical, that yesterday you hadn't even read the USPTO website and were asking other posters to make copy and pastes for you that backed up your claims, and were basing your entire fallacious arguments on a secondary reference website that was nothing more than a directory to find any type of lawyer in any field of law in any state (Nolo.com). Now today you are an expert on interpreting patent law and differentiating Utility and Plant Patents. Are you so certain of your understanding of the matter in a mere 24 hours? I would think someone so early on their journey into any field wouldn't show such hubris.

I thank you for the private comments, yet wholeheartedly disagree with your position. I hope you reconsider, because you were off to a good start with some useful information, and as said it's nice to see you do a little self-education on the matter and bring some points to the discussion. Your points would hold more water though if you weren't constantly trying to talk about the other posters in the thread, and simply focused on the facts that supported your claims.

-Chimera

 

[Chimera]

As well about his refusal to back up his claims about Cannabis plant patents getting granted, which are still not going to be granted despite his unsubstantiated claims.

Beta, I clearly stated above that the only patents being prosecuted currently at the USPTO are pending and have not been granted, please stop twisting facts to suit your needs.

Additionally, now you are the patent examiner, deciding what will be granted and what will not? You KNOW that these patents in process will not be granted, do you? Yesterday, you were saying that classically bred plants, not bred using biotechnology were not "inventions". Yesterday you had not even read the USPTO website, nor were aware of anything related to patent law other than what a clueless lawyer told you, one who wasn't aware of the patents already being prosecuted on the topic. Yesterday, the limit of your knowledge on the patent process and the rights earned when a patent was granted, was limited to what you had read and mis0interpreted on nolo.com?

I can only ask at this point, are you serious?

-Chimera

 

[Heusinomics]

I would actually like to thank beta for helpin to bring this issue to the forums..
It would b a terable shame for big biz/gov to sneak these restrictions by us w/o taking the "community " into the discussion. (His attitude is an embarrassment tho)!

As chimera stated, we hav some time yet for the regulatory agencies to catch up to the Cannabis industry. But we can all be assured that they "big biz/gov " will be very interested in using these protections to there advantage in a legal and regulated way. As many of the methods of protection are in use w many other flowers and veg.

Experts like chimera and Sam are dedicated professionals at the top of the field, based on a lifetime of passion and research. And are positioned to teach us all mor than a thing or two about many aspects both of breeding and canna biz.
My biggest respect to both!

Beta on the other hand IMHO has simply confused his passion for canna and a strong. " opinion" about what he "thinks"., How he feels it should B, rather than actually learning the facts and regs.

I def don't claim to b an expert, so I'm not trying to b a smart ass. This will eventually impact all of us growers, seed makers and buyers. So I hope to encourage the discussion to continue!

 

[Beta Test Team]

As well about his refusal to back up his claims about Cannabis plant patents getting granted, which are still not going to be granted despite his unsubstantiated claims.

Beta, I clearly stated above that the only patents being prosecuted currently at the USPTO are pending and have not been granted, please stop twisting facts to suit your needs.

Additionally, now you are the patent examiner, deciding what will be granted and what will not? You KNOW that these patents in process will not be granted, do you?

Yesterday, you were saying that classically bred plants, not bred using biotechnology were not "inventions". Yesterday you had not even read the USPTO website, nor were aware of anything related to patent law other than what a clueless lawyer told you, one who wasn't aware of the patents already being prosecuted on the topic. Yesterday, the limit of your knowledge on the patent process and the rights earned when a patent was granted, was limited to what you had read and mis0interpreted on nolo.com?

I can only ask at this point, are you serious?

-Chimera

You said you read an "article" that some lawyer said they are getting treated as normal patents. You still won't back up your claims (like the one below) and then try to spin it like you're correct and I'm some fool. Yea, good luck. I asked you to provide a link or citation for this article, and you ignored the request, as usual (I think you're making this up, personally). And I quote:

However, in a article I recently read a patent attorney claims the patent office seems to be treating them in the same fashion as they treat any other application.

The reason I was able to write this thread is I spent about 2 hours researching the topic today. Chimera, you're not dealing with a dullard here, quite the extreme opposite. Just because I knew nothing when I woke up didn't mean I couldn't learn more than you seem to know in two hours of researching this topic.

And this thread doesn't even include things like UPOV Convention.

You can try to spin things as you like, for example, I still don't think traditional breeding should be given a patent (and I never claimed they weren't allowed a plant patent), but I did agree with your definition of "invent." Try to keep up, will you? You're either just twisting words to save face, or you're really that confused, I'm not sure which one it is.

 

[Beta Test Team]

As chimera stated, we hav some time yet for the regulatory agencies to catch up to the Cannabis industry. But we can all be assured that they "big biz/gov " will be very interested in using these protections to there advantage in a legal and regulated way. As many of the methods of protection are in use w many other flowers and veg.

Experts like chimera and Sam are dedicated professionals at the top of the field, based on a lifetime of passion and research. And are positioned to teach us all mor than a thing or two about many aspects both of breeding and canna biz.
My biggest respect to both!

Beta on the other hand IMHO has simply confused his passion for canna and a strong. " opinion" about what he "thinks"., How he feels the it should B, rather than actually learning the facts and regs.

Wow. I post facts, yet Chimera is well known as an expert so he's in the right (even though he's incorrect in this case). No need to ask him to prove his claims, right? Because he's an 'expert' that cannot be wrong. Why do I even try...

I am the only one that hasn't posted an opinion, I have based everything on sounds claims and facts that I cite. How you think I posted "opinion" is just beyond me.