folder Filed in Cultivation, Legal
Fixing Plant IP Confusion
Dale Hunt access_time 10 min read

IT’S NICE TO BE NEEDED, IF NOT ALWAYS BELIEVED!

“UPOV PBR” In the US Is Only Available for Industrial Hemp

There are a lot of people out there with some background in plant-related IP and some of them have strong opinions about the right way to do things.  I know because I hear from them.  That’s a wonderful thing about the open lines of communication available via social media and other tools—it seems nearly everyone is accessible to nearly everyone else.  I wouldn’t want it any other way, because this helps me understand what still needs to be emphasized and reinforced in blogs like this.

I’m going to borrow from some interactions this past week or so, editing very lightly to make it more generally useful.  Here is a question I was asked very recently: “If you have 20 years of experience with UPOV PBR why suggest to average clients to get an expensive plant patent for a Cannabis variety? Most can neither afford to obtain or defend a Cannabis plant patent unless I am mistaken?”

And here is my answer:

UPOV in the US is Uniquely Unlike the Rest of the World

First, UPOV Plant Breeders’ Rights in the US are only available under the USDA Plant Variety Protection Act (PVPA) and only cover seed-propagated plants.  An amendment to the PVPA permitting the USDA PVP system to also cover asexually propagated plants was passed as part of the 2018 Farm Bill, but the USDA is still working out the administrative rules and procedures for this, so applications to cover asexually-propagated plants are still not being accepted.

The original limitation in the PVPA to cover only seed-propagated plants was a special carve-out from the normal UPOV scope that covers both sexually and asexually propagated plants, and it was done this way in the US because asexually propagated plants have been covered under the Plant Patent Act since the 1930s (this Act established the plant-patent system as a special form of protection outside of the normal utility-patent system).

A Special Exception in UPOV Just for the US

The US is unique in having this divided IP system, and the UPOV Act of 1991 was specifically written to accommodate this, by including Article 35(2).  If you look at footnote 8 of the list of UPOV members, that “reservation” was exercised by the US and never has been by any other UPOV member.  Since the US is the only country with a split system, no other country will ever need to invoke Article 35(2).

OK so IP to cover plants in the US, unlike anywhere else in the world, is really three different systems:

  1. USDA PVP (i.e., UPOV) which is still available only for sexually propagated plants (but that exclusion will go away soon).
  2. USPTO plant patenting, which is only available for asexually propagated plants.
  3. USPTO utility patenting, which is available for both modes of propagation.

Testing for Distinctness, Uniformity, and Stability

Something else that is very important to know about the USDA PVP system is that it requires a seed deposit with the authorized USDA seed depository.  And until very recently, no kind of Cannabis seeds were accepted for deposit.  Very recently the USDA started accepting deposits of seeds for “Industrial Hemp” as defined in the Farm Bill (Cannabis sativa having less than 0.3% THC).  Once the USDA is equipped to work with asexually propagated plants, it will require “witness plants” for DUS examination.  DUS testing is the UPOV approach to determining whether a given cultivar is suitable for protection.  The D stands for Distinctness and asks whether the cultivar can be distinguished from the closest know cultivars including but not necessarily limited to the parents.  The U is for Uniformity and asks whether a group of seeds or a group of clones all grow out to being true-to-type—having the characteristics that define the cultivar.  The S comes from Stability and asks whether multiple generations of seeds or clones consistently show the same characteristics as previous generations.  These tests are done under consistent conditions to try to remove the variability that would come from different cultivation techniques from one test to the next.

USDA will never accept deposits or witness plants for a form of Cannabis that is still federally illegal.  And USDA has not yet worked out exactly how they will do DUS testing for clones of Industrial Hemp or any other clonally propagated variety people may wish to protect under USDA PVP/UPOV.

What this means, and it is part of my answer to your question about why I would suggest that people get a plant patent for their Cannabis cultivars is that UPOV protection in the US (the USDA PVP system) is that quite literally not available for most Cannabis cultivars that people want to protect.  The only kinds of Cannabis cultivars protectable via UPOV in the US are cultivars of seed-propagated industrial hemp.

If You Want to Protect Marijuana, You Can’t Go to the USDA

I have clients who want to protect their higher-THC cultivars and even who want to protect hemp cultivars that they are cloning instead of seed-propagating.  If I tried to push them toward UPOV protection in the US, I would be committing malpractice because that form of protection is absolutely not available, period.

The “deposit problem” that makes USDA PVP impossible for everything except industrial hemp is not a problem for plant patents, because the plant patent system does not require a deposit of any kind.  So, there’s no issue of federal illegality–the USPTO has been issuing Cannabis-related patents since the 1940s and has so far issued three plant patents for Cannabis cultivars, with many, many more that are pending and working their way through the process.

Getting Real About the Cost Comparison

Another part of your question also deserves comment, and that is the part about plant patents being expensive.  In fact, a USDA PVP application, including the seed deposit, costs $5150 in USDA fees alone.  So even before paying ANY attorney fees for this, the USDA fees by themselves cost more than we charge for preparing and filing a plant patent application.

Obviously there are USPTO fees on top of what we charge for our work doing plant patent applications, and there are costs associated with responding to the very common requests from the USPTO examiner to provide more information about the cultivar, but we typically see cost averages for plant patents, start-to-finish, including USPTO fees, between $10k and $12k paid out over the course of the process from examination to issuance.  I’m not meaning to imply that this is a trivial amount, but it’s very comparable to the cost of obtaining a USDA PVP registration (if it were even available).  ($5150 plus attorney fees for preparing the application and moving it through the process to allowance would likely add up to a total of $8-10k, and potentially more depending upon an attorney’s billing rate and whether anything unusual arose during the DUS testing that would require attorney work to resolve.)

The expensive form of US IP protection for plants is a utility patent.  However, it is currently the only option available for seed-propagated non-hemp Cannabis.  I won’t go into a lot of utility patents because this email is already getting long.

I Don’t Tell People What to Do, I Listen and then Tell Them About Their Actual Options

One last part of your question I’d like to address is the part about suggesting to average clients that they get a plant patent.  In fact, I don’t.  I listen first to what they want to accomplish with their cultivar, how they propagate it, how they are going to commercialize it, why they believe that they need some protection, etc.  Then we talk about the options and what their choices are.  It’s a matter of giving good legal advice that takes into account a client’s situation.  And in some cases, the advice is that if their security is strong enough, maybe they don’t need any formal kind of IP protection, especially if they are having trouble affording it.  See this recent blog post, and please do read all of it before deciding it’s incorrect or it’s bad advice.

OK, I hope that explains why I don’t recommend UPOV for my Cannabis clients.  I absolutely would outside the US, obviously, and will within the US, as one option, once the USDA PVP system accepts such applications.  However, even then, there are numerous considerations that go into deciding the right way to protect a given cultivar.  I went into this in a recent blog.

Are Self-Taught Cannabis Breeders Unqualified? I Say No

Just one other comment about plant breeders, and we may just need to agree to disagree on this point.  I have worked with PhD plant breeders at universities and with BS- or MS-level plant breeders who work for several of my clients.  While they have training in genetics and inheritance, every one of them that I have worked with has been focused on phenotypes.  They do a cross of parents that have some of the traits they are looking for and then they grow out many, many of the offspring and select the ones with the best phenotypes and keep propagating and selecting until they have something worth protecting.

This is exactly what I see self-taught Cannabis breeders also doing.  While I may understand more about genetics, epigenetics, pleiotropic inheritance, recombination rates, the biochemistry of terpenes and cannabinoids and flavonoids, these breeders know what they are doing, and they get very special results.  Obviously, some (including some clients I’m working with) are looking for a particular chemotypic profile or at least for something that meets certain chemotypic criteria.  They get their certificates of analysis (COAs), which are now readily available since many states require them as part of the legal Cannabis market.  And the breeders I work with definitely know how to read a COA and make decisions based on it.  College and formal training is not without value, but from where I sit, having worked with breeders whose training ranges from self-taught to PhDs in plant breeding, it seems to me that they end up doing and looking for the same kinds of things.  Now, if one were doing marker-assisted breeding as many in Big Ag do, that would be different.  I’m talking about fruit and grass and flower breeders, whose work approach in general terms is very similar to that of Cannabis breeders I know.

Well, that blog kind of wrote itself this week, by being lifted straight out of an email I sent.  I hope it’s helpful.  You can always get in touch for help with these things by going to PlantAndPlanet.com.