Plant Patent Law: Protecting the Variety Pipeline

More goes into the development of the new varieties you see at Spring Trials than you’ve probably ever imagined. And it goes far beyond a breeder’s ability to make a useful new cross.

A vast web of intellectual property protection laws, patents, and patent-like systems, is necessary to allow breeders the means to invest in research and development to bring new and innovative varieties to market. However, protecting intellectual property has become a complex and expensive process for breeders in the U.S. and worldwide. The international horticulture industry continues to get smaller, and breeders now produce varieties for distribution globally. So it’s important, they say, that a standardized process be adopted for enforcing plant breeders’ rights throughout the international community. But agreeing on a way to do that is the difficult part. In some cases, the laws have not been protective enough. In others, they are limiting innovation.

Greenhouse Grower asked a number of breeders, from large corporations to smaller breeding houses and independent breeders, for their input on these and other topics to get their take on what should be done about the current state of intellectual property protection for plants. Let’s take a closer look.

Plant Patents and Where They Fall Short

In the U.S., intellectual property protection or patents for plants are easier to obtain than in most other areas of the world; but in some cases, they also differ from the rest of the world in what they do or don’t cover.

Breeders of seed or sexually propagated varieties are able to file for protection under the U.S. Plant Variety Protection Act (PVPA). Yet the breeders’ exemption under the International Union for the Protection of New Varieties of Plants (UPOV) allows for all breeders to buy rights to use original material in order to breed new varieties. If they desire, breeders can block this ability by applying for utility patents, so their competitors are not able to use their genetic material to breed new varieties. Meanwhile, seed breeders’ F1 hybrids also have built-in protection through trade secret.

Sakata Ornamentals has alleged that material from its SunPatiens impatiens series was used to create and market an essentially derived competitive series.

Intellectual property protection gets a bit trickier on the vegetative side, where much of the ornamental breeding has migrated over the past three decades. It’s much easier to take cuttings from a patented plant and illegally propagate it, though there are heavy consequences including imprisonment and fines for doing so. The PVPA, which protects sexually (seed) propagated material, adopted language to include essentially derived varieties (EDV). On the other hand, the Plant Patent Act, which protects varieties produced through asexual (vegetative) propagation, does not include EDVs. However, this differs from plant variety protection rules adopted by most countries under the UPOV Convention.

“EDV, as we see it, should be included under the U.S. Plant Patent protection, as in other UPOV countries,” says Chanochi Zaks, Vice President of Danziger “Dan” Flower Farm. “Otherwise, the U.S. shall continue to be different than most of the world, and thus create odd situations for breeders, such as allowing an EDV to be sold in the U.S. that cannot be commercialized in the EU.”

There is a mix of opinions, however, about whether evolving technologies to produce essentially derived varieties should be written into the U.S. Patent Act of 1930. Some say yes, absolutely — either to protect essentially derived varieties or to protect plant patents holders from companies using technologies to mutate patented varieties and market them as their own — or both.

“The Plant Patent Act would be improved if it recognized essentially derived varieties, as the PVPA does,” says Dale Scalla, Patent Agent for Syngenta. “Currently, it’s too easy to claim a plant is different, when it shares almost all of the characteristics of a plant covered by a plant patent.”

But others say the definition is unclear and nearly impossible to capture, because of the nature of the technology.

“The Plant Patent Act is succinct and rights are limited to one cultivar,” said representatives from Ball Horticultural Co. “The Act cannot support EDV language as currently defined. How does one determine what are ‘essential characteristics’ and what level of deviation from these characteristics no longer makes it an EDV? Does the breeding method alone determine if a new plant is an EDV? A plant can be protected under a plant patent, no matter what the breeding technology, making it no different from a PVP in that regard.”

Breeders Seek Broader Protection With Utility Patents

There is currently no movement on changing the Plant Patent Act to include EDV, and breeders say they feel they must resort to stronger forms of intellectual property protection to protect their genetics from being copied, through application for utility patents.

Utility patents are desirable due to their ability to cover a broader range of intellectual property, from plants and plant parts to traits and breeding methods. But there are drawbacks, as well.

“The application process is more time consuming, filing fees are higher [two to three times more than a U.S. Plant Patent], maintenance fees apply, and plant or tissue culture deposits are required to be made in the same way that seed deposits are required for seed varieties,” says Corinne Marshall, Intellectual Property and Licensing Manager for Sakata Seed America.

For this reason, most breeders use utility patents to cover unique, broad traits that can apply to more than one variety, and have the potential to cover future breeding efforts. And because of the exorbitant investment in money, time, effort, and maintenance, breeders say they have to be especially selective about choosing what to protect.

“Having a utility patent can justify allocating more breeding resources to plants that will be covered by the utility patent, since competition is usually curtailed when a utility patent is in force,” says Mark Broxon, Executive Director of Proven Winners.

Proven Winners claimed Westhoff Flowers’ Calibrachoa ‘Candy Bouquet’ variety was a separate essentially derived variety from a Superbells calibrachoa variety, using a trait protected under utility patent by one of its breeders, who also bred ‘Superbells Holy Moly’ (pictured).

James Weatherly, a patent attorney with Cochran Freund & Young LLC in Denver, CO, and the Executive Director of the Seed Innovation and Protection Alliance, says although the cost for a utility patent is higher than a plant patent, the benefits of broader protection offer a better return on that investment.

“It gives breeders the exclusive rights on how their material is used,” Weatherly says. “A plant patent only has one claim, and that is to the mother plant itself. Traditionally with plant patents, other breeding companies can still breed with the material, whereas a utility patent can have as many claims as you want, in a number of different directions. We also see trait-based protection for a value-added trait, such as heat or drought tolerance. It’s much more robust and there’s a lot more flexibility for the stakeholder, the breeder, to work with.”

Many smaller breeding houses and independent breeders have avoided seeking utility patents due to the prohibitively high cost, which they say limits their ability to protect special traits and alleles, and that the patent system is more favorable to larger corporate breeders.

“Wide application of utility patents in flower breeding could have unforeseen negative consequences, like potentially concentrating innovation among fewer, larger breeders, who would have the economic resources to secure patents and defend them in court — time and money that could otherwise be directed to innovation,” Sakata CEO David Armstrong wrote in a LinkedIn article posted in October 2016. “Commonly used, utility patents would be a ‘game changer’ for flower breeding.”

Weatherly says the U.S. does provide the opportunity for scaled down costs related to the government fees. Entities with fewer than 500 employees, for example, pay only half the government fees, and there’s also a micro-entity fee available, at 25% the typical cost.

“We are seeing even small companies go the utility route, especially if they see a variety that has some really good cornerstone breeding aspects to it,” Weatherly says. “If the difference is, let’s say $2,000 to $3,000 (for a plant patent) versus $8,000 to $10,000 (for a utility patent) in the long term for 20 years, you’re going to get a lot more bang for your buck by getting utility protection.”

Yet even with the broader protection a utility patent offers, defending it is still not simple, says Broxon, whose company has had experience in litigation to protect patented traits.
“Competitors will search for ways around the patent,” Broxon says. “Licensing agreements for use by others of a utility patent can be a way to eliminate this, although the invention is then no longer unique to the inventing company.”

Could Ornamental Breeders Benefit From a Patent Pool?

There are mixed feelings among breeders of all sizes around whether or not germplasm should be locked up under utility patent. While it allows breeders who discover desirable traits to protect their own innovation and control who uses it through licensing agreements, it also limits innovation that could be possible in the broader industry. This leads to a discussion about whether utility patents are worth it, and how to better utilize germplasm under patent.

“This is the two-edged sword,” says Matthias Redlefsen, Managing Director for Ernst Benary & Co. “Everyone feels we should be able to breed with anything, but at the same time, once you have something that is distinct, you want to protect it as well as possible. [The advantage] is always in the eye of the beholder.”

As a relatively small industry that’s unique in that there is a general spirit of cooperation and friendliness, there’s been a growing trend toward breeders working together to license technology in exchange for money, or to trade the ability to work with certain traits each have patented.

This cooperation could be taken a step further by creating an industry-led patent pool, similar to the Vegetable International Licensing Platform, or ILP-Vegetable, in which the goals of the organization are to guarantee access to patents covering biological material for vegetable breeding; and to safeguard that incentives to innovate, which depend on the availability of plant protection, remain intact.

RedPeppers_RosanaPrada_Flickr
ILP Vegetable could provide an affective model for breeders to set up a licensing platform in the ornamental industry.

According to the ILP, it “provides a straightforward, easy way for vegetable breeders to license the traits they need at a fair and reasonable cost so they can bring new products to the market that meet demands from growers and consumers. The members of the ILP Vegetable will make all of their patents related to vegetable plant traits accessible to their fellow members under the conditions of the ILP. Membership is open to all interested parties, regardless of whether they own patents or not.”

Syngenta is a founding member of ILP Vegetable, and also has introduced a technology called TraitAbility, an e-licensing system that allows for plant breeders, companies, and researchers to access and apply for licensing of Syngenta’s plant innovations efficiently under clear financial terms and transparent conditions.

Syngenta’s Scalla says filing and acquiring patents on new inventions doesn’t have to mean that companies are blocked from having access.

“As an R&D company, Syngenta files plant patents and utility patents to protect novel varieties, traits, and alleles. But we also look for opportunities to improve access to intellectual property, making noteworthy efforts, particularly in the vegetable area. The trait outlets (ILP and TraitAbility) provide access for plant breeders around the world, while maintaining an incentive to continue innovating.”

Sakata joined ILP-Vegetable in February, and seeing the benefits in the vegetable industry, says the model could work in ornamentals, as well.

“To the extent that an industry-led patent pool (like the ILP) would provide fair and consistent rules for breeders to exchange patented varieties in mutually agreed licensing deals, it would secure an environment in which innovation would be promoted,” says Mark Seguin, Global Cuttings Marketing Manager for Sakata. “It is critical that vegetative ornamental breeding organizations secure some level of confidence in a return on their investment for our industry to experience new innovations and breakthrough genetics.”

Ball Horticultural representatives also said there is no foreseeable objection to participating in an industry-led patent pool, but there are very few patented traits in the ornamentals industry thus far, so the scope would be limited.

What it would do is open up the horizons for breeders to be more creative and increase competition and innovation, Redlefsen says.

“We would savor a situation in which all breeding material would be accessible to everyone, and then it would be all about who is the more effective breeder,” he says. “’See you on the pitch!’ That’s what it used to be like and, to my understanding, that’s what it should be like.”

Preference for an Industry-Led Organization

Mike Uchneat, an independent breeder who has worked with a number of large and small breeding companies, says whatever happens, he’d like to see innovation and creativity rewarded by breeders respecting one another’s work instead of being in such a rush to copy it.

“The worst thing that happens is somebody does something fairly creative, or introduces a new species or introduces a new habit on an existing species, and then the next year, everybody has copied it and they all have their versions,” Uchneat says. “That’s really damaging to our industry. It’s also a respect and ethics issue, and I would hope people would be challenged to improve upon creativity, not copy it to make sure they get their share of that creativity.”

Armstrong from Sakata, Redlefsen from Benary, and Steve Jones from Green Fuse Botanicals all say they are also in favor of creating an industry-led organization that operates with mutual respect and ethics under an agreement for the vegetative side of ornamental breeding. They each held up the European organization Fleuroselect as the best example for how to execute this. Danziger’s Zaks cites another international organization, CIOPORA. But no matter the model, these breeders say cooperation is a potential solution.

“We believe in and strongly recommend all companies to join [an organization like] CIOPORA, to help promote and improve protection of breeders’ rights and greatly help our industry,” Zaks says. “It is important for us to respect others’ IP rights as we expect others to respect ours. We believe in the cooperation between the breeders of our community, and feel this is very important in our competitive world.”

See “Fleuroselect and CIOPORA Offer Organizational Leadership Breeders Admire” for more information on these organizations, and see “Are Utility Patents Tying Up Innovation With Litigation?” for some perspective on how plant patents affect plant businesses in all links of the variety supply chain, from breeding to retail.

Intellectual Property Glossary of Terms

Intellectual property (IP): Creations of the intellect for which a monopoly is assigned to designated owners by law. Intellectual property rights are the protections granted to the creators of IP, and include trademarks, copyright, patents, industrial design rights, and in some jurisdictions, trade secrets.

UPOV: International Union for the Protection of New Varieties of Plants

Plant Breeders’ Rights: A patent-like system that allows the plant variety owner to prohibit specific unauthorized uses of the variety. To be eligible for protection under UPOV-based laws, a variety must be new, distinct, uniform, and stable (DUS). Newness (or novelty) requires that an applicant variety has not been “sold or otherwise disposed of to others” for more than one year in the country of application or for four years elsewhere.

Essentially Derived Varieties (EDV): According to the UPOV 1991 Act, an essentially derived variety (EDV) shall be deemed to be essentially derived from another variety, the initial variety, when: a) It is predominantly derived from the initial variety, or from a variety that is itself predominantly derived from the initial variety, while retaining the expression of the essential characteristics that result from the genotype or combination of genotypes of the initial variety and; b) It is clearly distinguishable from the initial variety and; c) Except for the differences, which result from the act of derivation, it conforms to the initial variety in the expression of the essential characteristics that result from the genotype or combination of genotypes of the initial variety.

Plant Patent: Through the U.S. Patent and Trademark Office, a plant patent is granted to an inventor who has invented or discovered and asexually reproduced a distinct and new variety of plant. The grant, which lasts for 20 years from the date of filing the application, protects the inventor’s right to exclude others from asexually reproducing, selling, or using the plant so reproduced. This protection is limited to a plant in its ordinary meaning.

Plant Variety Protection: The Plant Variety Protection Act of 1970 (PVPA) is an intellectual property statute in the U.S. The PVPA gives breeders up to 25 years of exclusive control over new, distinct, uniform, and stable sexually reproduced or tuber propagated plant varieties.

Utility Patent: A patent that covers the creation of a new or improved — and useful — product, process, or machine. A utility patent, also known as a “patent for invention,” prohibits other individuals or companies from making, using or selling the invention without authorization.

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