In this post, guest author Jeremy Kapteyn, Ph.D., from Rose Law Group, discusses using plant patents to protect new & distinct strains. Evoke Law has also written about protecting strains: “Branding a Cannabis Strain: Don’t Reinvent the Wheel” in mg Magazine’s April/May 2018 special branding issue.
Cannabis breeders, cultivators and others developing cannabis genetic resources are almost invariably surprised to learn that cannabis plants are protectable under U.S. patent laws, notwithstanding their illegal status under the Controlled Substances Act (CSA). While the interplay between the CSA and federal trademark laws effectively prohibits federal registration of marks covering goods and services directly related to cannabis products, since registration requires use in commerce, which is unlawful under the CSA, the patent laws have no such use requirement. Thus, the CSA does not preclude the availability of patent protection for cannabis-related inventions, including cannabis plants themselves.
Not only can cannabis plants be patented, but they are eligible for two different types of protection: utility patents and plant patents. This article focuses on plant patent protection and provides practical insights into how plant patents can be commercially valuable to cannabis breeders and cultivators.
Plant Patent Eligibility Requirements
1. Asexual Propagation
A key element of eligibility for plant patent protection is the ability for the plant to be asexually propagated (i.e., multiplied without using seeds). This includes any non-seed methods of propagation, such as by rooted cuttings (a propagation method routinely used for cannabis), as well as tissue culture propagation, which is of increasing interest in the industry.
2. “Distinct” & “New”
The other key elements of plant patent eligibility are that the subject plant be “distinct and new.” Due to the more narrow scope of protection afforded by a plant patent, as well as the ability to modify and add to the description of the plant during prosecution of the application, patent eligibility criteria are somewhat more easily satisfied for plant patent applications than for utility applications. Data helpful in establishing the distinctiveness of a cannabis cultivar are increasingly accessible to breeders with greater availability and affordability of plant genome sequencing and phytochemical profiling services.
The requirement that the plant be “new” means that a cannabis cultivar that is already known or available to the public for one year or more is not eligible for protection. This requirement is likely the primary obstacle for most cannabis breeders. To avoid the risk of being time-barred from patent eligibility, cannabis breeders actively developing new cannabis cultivars should consider implementing procedures to systematically evaluate new genotypes for potential commercial interest on a confidential basis and take steps to initiate the patent procurement process prior to promotion or commercial release.
3. “Invented” or “Discovered”
To be eligible for plant patent protection, a plant must also be “invented or discovered.” Thus, a distinct and new plant variety must be produced in some way by human intervention. Plants discovered in the wild are not eligible for plant patent protection.
Scope of Plant Patent Rights
Like a utility patent, the claim of a plant patent defines the scope of the patent. However, a plant patent differs from a utility patent in that it includes only a single claim to the plant variety described in the specification of the patent. The specification must describe the plant and its characteristics in sufficient detail to allow it to be examined and distinguished from related known varieties of the same species, including the parents or known “antecedent” plants. The specification must also describe where and how the plant was asexually reproduced.
A specification of a plant patent is fairly formulaic and considerably less expensive to prepare than a utility patent, although it is of a technical nature and must be accurate and comprehensive. A plant patent is narrow in scope and protects only the particular plant variety, or essentially the plant genotype, described in the patent’s specification. In contrast, a utility patent can include broad claims covering a variety of subject matter, including plants, plant cells, tissues or other parts, isolated genes, method of plant breeding or production, etc.
Like a utility patent, the term of a plant patent is 20 years from the date of filing. The owner of a U.S. plant patent has the right to exclude others from asexually reproducing the patented plant, and from using, offering for sale, or selling the patented plant, or any of its parts, throughout the U.S., or from importing the plant, or any parts, into the U.S.
For cannabis breeders contemplating licensing the cannabis genetics they have developed, plant patents offer an attractive and cost-effective layer of legal protection above and beyond an intellectual property licensing agreement. Securing a plant patent for a cannabis genotype would provide the breeder/licensor with a supplemental enforcement mechanism, in addition to contractual protections, to prevent unauthorized reproduction and sales of the protected plant, and possibly also unauthorized use for breeding and production of other new genotypes. While only a single plant patent for cannabis has been issued by the USPTO to date, other applications are pending, and it seems likely that this number will increase rapidly in the near term as cannabis breeders and cultivators become aware of the availability of plant patent protection and develop new commercially valuable cultivars eligible for plant patent protection.
Jeremy Kapteyn is an intellectual property attorney at Rose Law Group in Scottsdale, Arizona. He has a Ph.D. in Plant Biology from Purdue University and research experience in plant functional genomics from a postdoc appointment at the University of Arizona, where his research was focused on specialized plant metabolism in basil and tomato glandular trichome cells. After transitioning from scientific research to a legal career, he joined the IP practice of one of the largest law firms in the western U.S., where he provided clients with patent procurement and strategic counseling services. At Rose Law Group, Arizona’s leading cannabis industry legal services provider, Jeremy applies his technical training and intellectual property experience to help cannabis industry clients develop intellectual property assets and enhance the value of their businesses.