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).