Cannabis plant and seed IP is not like other IP

Since 2005, our agriculture and horticulture IP attorneys have focused and specialized their practice on matters directly related to plant and agriculture intellectual property rights including Plant patents, Utility Patents, Plant Breeders Rights (US PVPs), trademarks and licensing, in the US and internationally.  Our firm has a 98% success rate in biotech/ag patents and we were the number one ranked firm nationwide in 2016.  We also prosecute approximately 10 to 15% of all US Plant Patents.

Our Agriculture IP team are recognized worldwide for their expertise in plant and Agriculture IP matters and are regular presenters at conferences both in the US and internationally, as well as regular contributors to columns in SeedWorld, GrowerTalks and other agriculture related trade journals.

There are a number of law firms jumping on the cannabis bandwagon and stating that they know cannabis and seed IP, but at CFY, we  are one of only a handful of US law firms that actually understand the nuances and requirements around the different forms of protection for plants and seed due to our numerous years of experience in plant IP.

How can I protect an industrial hemp variety or marijuana variety in the United States?

  • The U.S. affords the following three main types of intellectual property protection for plants: Utility Patents, Plant Patents and Plant Variety Protection (“PVP”). S. Utility Patents and Plant Patents are filed with the United States Patent and Trademark Office (“USPTO”) and a PVP is filed with the Plant Variety Protection Office (“PVPO”).
  • A U.S. Utility Patent application can be filed for seed or vegetatively propagated varieties and lines. The application requirements are a brief botanical description of the plant and seed.  It is recommended that data regarding field trials be included in the application.  An essential element of the application is a seed deposit of two-thousand five hundred (2500) seeds or plant tissue with a USPTO-approved depository.  With the recent changes to the farm bill, a U.S. utility application is now possible for industrial hemp.
  • A U.S. Plant Patent application may be filed for asexually propagated varieties, such as many hemp lines as well as most ornamental plants, fruits, trees and vines. The application requirements are a detailed botanical description of the subject plant, the origin and breeding history, a description of the original parental lines, comparisons with the parental lines/similar varieties, and photos of the subject plant.  No plant deposit or trials of plant material are needed to obtain a U.S. Plant Patent, making this a great option for medical or recreational marijuana.
  • A U.S. Plant Variety Protection (“PVP”) application is filed for seed and asexually propagated varieties and lines. The application requirements are a detailed description of the characteristics of the subject plant, statistical analyses derived from trial data from multiple locations and years, the requisite PVP forms and a seed or tissue deposit.  The deposit does not need to be made at the time of filing, but will need to made no later than ninety (90) days from the official filing date.  All seed deposits are made with the National Center for Genetic Resources Preservation in Fort Collins, Colorado or with the Bigelow Depository in Maine.  US PVP protection is now available for industrial hemp.

What are the main differences in protection between a U.S. Utility Patent, a U.S. Plant Patent and a PVP?

  • While a U.S. Utility Patent can have a number of claims, a U.S. Plant Patent has only one (1) claim which is directed to the subject variety. Depending on the claims, a U.S. Utility Patent affords protection against both asexual and sexual reproduction as well as breeding of the subject variety by third parties. A U.S. Plant Patent affords protection against only asexual reproduction of the subject variety by third parties.  A U.S. Plant Patent does NOT extend protection to any sports or mutations of the subject variety that may result in a novel plant.
  • Generally, and with a few exceptions, under 35 U.S.C. §271, a U.S. patent (including both utility and plant patents) prohibits third parties from making, using, offering for sale, or selling any patented invention, within the United States, or importing into the United States any patented invention during the term of the patent.
  • The PVP Act contains two major exemptions to the rights of an owner of a PVP Certificate. The first is a research exemption that allows the use of the plant or seed for breeding purposes to develop a new variety, and the second exemption is a farmer’s exemption that allows the saving of seed by the farmer for the sole use of replanting on the farmer’s land.  NEITHERS. Utility Patents nor U.S. Plant Patents provide for these exemptions.

How long does it take to obtain a granted U.S. Utility Patent or PVP Certificate?

  • For a U.S. Utility Patent for a plant variety, the timeframe usually ranges anywhere from one (1) to three and a half (3.5) years, and for a U.S. Plant Patent, the timeframe usually ranges from about one (1) to two (2) years (taken from the time of filing the application to the time of grant).
  • For a U.S. PVP Certificate, the timeframe usually ranges from one (1) to four (4) years, depending on the subject plant.

What is the term of a U.S. Utility Patent, a U.S. Plant Patent, and a PVP Certificate?

  • A U.S. Utility Patent and a U.S. Plant Patent have a term of 20 years from the effective filing date of the application.
  • The term of a U.S. PVP Certificate is twenty (20) to twenty-five (25) years from the issuance of the Certificate, depending on whether the variety is a seed or tuber propagated variety (20 years), or a tree or vine propagated variety (25 years).

Trademarks and hemp

Trademarks can be a valuable resource to help a company differentiate their hemp lines in the market.  A trademark is a word, symbol, sound or device, which serves to indicate the source of seed, plants, fruit or other products or services. This is in direct contrast to a patent or Plant Variety Rights, which are often forms of protection on the product or seed itself.

There are a number of options for a trademark, but the key to a good trademark or brand is one that helps differentiate your product or seeds from your competitors, allowing the purchaser to quickly find what they are looking for.

It is important to remember that the value of a trademark is centered on the reputation to the consumer of the goods associated with the mark.  Based on that reputation, the consumer has an impression that they know the source of the goods and the quality and/or characteristics they expect from those goods or services.

There are two forms of trademark rights in the US: common law and federal rights.  Common law rights are based upon actual use of a mark in commerce and extend to the locations where a mark has actually been used.  An organization who wants to provide notice of their common law rights may use the ™ symbol with the mark.

Federal trademark rights are provided through the registration of your trademark with the US Patent and Trademark Office (“USPTO”).  Federal trademark rights provide the trademark owner with rights across the entire US and once a mark is registered, allows the trademark owner with the right to use the ® symbol.

Identifying trademarks and their value to your organization is an important first step.  After that, it is vital for an organization to set up systems to protect and maintain its trademark rights, as failure to properly maintain a mark can result in the loss of rights to a very valuable mark.

In the plant and fruit industry, a trademark is intended to identify the source of the plant or fruit variety and not the plant or fruit variety itself. In other words, if a company has a word that they would like to use as a trademark, refrain from using the word as the varietal/cultivar name of the plant in any publications or brochures, and even patent or Plant Breeders Rights applications. Doing so prevents the possibility of your trademark from becoming part of the public domain and losing the enforceability of a good mark.

Who can I contact at CFY to find out additional information regarding Utility Patents, Plant Patents and PVPs?

Please contact James Weatherly (jamesw@patentlegal.com at 970-492-1100), Barbara Campbell (barbc@patentlegal.com at 970-492-1100) or Bethany Roahrig (bethanyr@patentlegal.com at 970-492-1100) for any additional information or questions that you may have regarding protecting your plant variety.

Articles on Ag IP

“Why Should Seed Businesses use Copyrights” SeedWorld, February 2018

“Its not-just-patents-pvp” SeedWorld, January 2018

“Protecting Plant Genetics” GrowerTalks Magazine, to November 2016.

“Hey you stole my plant!” GrowerTalks Magazine, November 2012.

“What Happens When A Patent Expires?” Germination, January 2012.

“Obama Reforms Patent Law,” SeedWorld, December 2011.

“What Happens When A Patent Expires?” Seed World, December 2011.

“Plant Patent Primer: A step-by-step guide for protecting your new plants with a U.S. plant patent,” Greenhouse Grower, Mid-September 2011.

Developing an IP Strategy: Plant Patents,” Greenhouse Product News, vol. 21 number 9, September 2011.

“A Plant by Any Name is Not the Same,” GrowerTalks Magazine, June

23, 2011.