[Beta Test Team]

[I'm not sure where to put this thread, please feel free to move it if this isn't the proper place.]

I am starting this thread with lots of quoting of academic source material to try and lay a ground work for definitions and concepts, so we all start out at the same level of understanding (though some have much greater level, to be sure). I was motivated to start this thread because there is too much conjecture posted about these topics as it relates to plants and drug Cannabis in particular. It's time to separate facts from opinion.

This thread is not about whether plant patents, etc., are good or bad, so please don't discuss your personal feelings on that matter in this thread. This thread is only to collect facts and set the record straight.

I did not know much of anything about these topics, which is why I started this thread, to educate myself and hopefully help others, as well as to improve the discussion on these topics by injecting provable facts.

Please feel free to add more facts and correct anything that may be wrong, but, and this is a big but, please cite everything you may claim so we can see the source of your claims. If you’re just going to add your opinion without citing the source for that opinion please don’t bother posting.

NOTE: Part 1 is US based. Thread part 2 will be focused on UPOV Convention and TRIPS Agreement.

NOTE: These are great starting references to read:
- https://pennstatelaw.psu.edu/_file/a...nt_Patents.pdf
- https://www.uspto.gov/patents-getting...out-35-usc-161


These are my initial take-aways from reading the above and following works:

- The pollen or seeds from a patented plant are not restricted by the patent, so a grower or other breeder can use them as they see fit, for example, to grow and breed as they see fit.

- A plant patent only protects that specific plant (genotype), so if a different breeder created a variety with the same chemical makeup as the patented plant (or the same leaf color, for example), they aren’t infringing upon the plant patent holder. It’s only when it’s a utility patent that the copying breeder in this case would be infringing upon the patent. To infringe upon a plant patent the actual plant (genotype) is all that matters.

- A plant variety protection certificate seems to provide more protection than a plant patent, as it also covers sexual reproduction. So a different breeder can't use the protected plant to create new hybrids, except under the "research exception." While plant patent is only about asexual reproduction. A big apparent difference here is the variety must be 'true breeding,' while a plant patent doesn't make such a requirement.

- A trademarked plant may be cloned and used as the grower or a different breeder sees fit, but the grower or breeder may not use the same name as the trademarked name.

- In terms of Cannabis plants, I spoke with the "office of patent legal administration" at USPTO and I was told they will grant patents (plant and utility) for drug Cannabis plants.


From https://www.uspto.gov/patents-getting...-161#heading-5

- Grant of a patent for a plant precludes others from asexually reproducing or selling or using the patented plant. A plant patent is regarded as limited to one plant, or genome. A sport or mutant of a patented plant would not be considered to be of the same genotype, would not be covered by the plant patent to the parent plant, and would, itself, be separately patentable, subject to meeting the requirements of patentability. A plant patent expires 20 years from the filing date of the patent application. As with utility applications, when the plant patent expires, the subject matter of the patent becomes public domain.

From https://www.princeton.edu/~ota/disk1/1989/8924/892407.PDF

- Plant patents, authorized by PPA, protect plant varieties that have been asexually reproduced, including cultivated sports*, mutants, hybrids, and newly found seedlings. They cannot be obtained for plants reproduced from seeds, tubers (e.g., Irish potatoes or Jerusalem artichokes), and wild varieties found in nature that are not asexually reproduced. Bulbs, corms, stolons, and rhizomes are not considered to be within the tuber exception. For a period of
* A sport is an individual exhibiting a sudden deviation from type beyond the normal limits of variation, usually as a result of a mutation.

- Plant Variety Protection Certificates, authorized by PVPA, provide a form of protection for new, distinct, uniform, and stable varieties of sexually reproducing plants, except fungi, bacteria, tuberpropagated or uncultivated plants, and firstgeneration hybrids. PVPA is administered by the Plant Variety Protection Office (PVPO) within the U.S. Department of Agriculture (USDA). Under PVPA, the breeder can exclude others from selling, offering for sale, reproducing (sexually or asexually), producing a hybrid from the variety, and importing or exporting the protected variety. Two exemptions limit the certificate holder’s protection: farmers may save seed for crop production, and breeders may use the protected variety to produce new varieties-the so-called research exception. Furthermore, the Secretary of Agriculture can require the certificate owner to grant licenses to third parties if it is in the public interest. The period of exclusion is 18 years (7 U.S.C. 2483(b)).

- Utility patents, issued under general patent law by the PTO, can be granted for plant inventions (35 U.S.C. 101) (8,16). Patents issued can claim plants, seeds, plant varieties, plant parts (e.g., fruit and flowers), processes of producing plants, plant genes, and hybrids. Utility patents for plants and varieties provide 17 years of protection for the owner. Chapter 3 discusses the requirements that inventions, including plants, must meet to be patentable.

From https://extension.oregonstate.edu/gardening/what-does-it-mean-when-nursery-plants-are-patented-or-trademarked

- A patent legally prevents others from reproducing the protected plant variety by cuttings, tissue culture or any other method of asexual propagation without the written authorization or licensing of the patent holder. Possession of improperly propagated plants of patented varieties constitutes infringement, even if an illegal propagation was inadvertent.

- Though asexual reproduction may be prohibited on a patented cultivar, there is no regulation against using the plant in sexual reproduction. In other words, the seed or pollen from a patented variety may be used without permission of the patent holder. The offspring are free of patent regulations.

- If a plant is patented, a license is required from the patent holder in order to make cuttings of that plant, even if it is planted in your own back yard. Unlike with a copyright, there is no concept of “fair use rights” for patents in the United States.

- Trademarking is another way that the nursery industry gets recognition for its varieties, explained Altland. It’s faster, easier and cheaper than the patenting process for a nursery company and is renewable every 10 years. A trademark helps consumers associate certain varieties with a company name, much like “Big Mac” is associated with McDonald’s. Trademarking helps companies build customer loyalty.
[NOTE BY BTT: It’s not possible to get US federal trademark protection of a Cannabis variety, cultivar, or other; but state trademark protection can be an opinion in some states.]

- A trademark on a plant protects only the plant’s name, not the plant cultivar itself, as with a patent. Another person could propagate a trademarked plant, but not call it the same variety name. Examples of trademarked varieties include the popular “Wave” series of petunias.

- Unlike a patented plant, if you buy a trademarked plant, you can propagate it asexually by taking cuttings. You can even sell the propagated plants for profit, but you can’t call those plants by the trademarked name or acquire your own trademark for those same plants. You can, however, use the plant’s cultivar name if it has one (shown in single quotes) – assuming that it isn’t also patented.

From https://www.cof.orst.edu/cof/teach/ag...r%20plants.pdf

- A plant patent, like a utility patent, has a term of 20 years from the filing date of the application. However, unlike a utility patent, there is only one claim to the plant variety itself, for example, “A Bermuda grass plant substantially as described and illustrated in the specification herein”10. The claim may also recite certain distinguishing characteristics.

- Until recently (1999), a plant patent only prevented another from selling or using the whole plant. However, 35 USC §163 has been amended in the most recent Congress so that the grant includes “the right to exclude others from asexually reproducing the plant, and from using, offering for sale, or selling the plant so reproduced, or any of its parts, throughout the United States, or from importing the plant so reproduced, or any parts thereof, into the United States”.

- First, for asexually produced plants, a plant patent may be useful where it is difficult to meet the enablement requirement of a utility patent. Second, plant patents and PVP certificates only cover the plant variety and plants derived from the variety; a utility patent may cover similar plants, method of obtaining the plant, and method of use. Therefore, whenever possible, seek a utility patent.

- The deposit of seeds to a recognized depository, such as the Agricultural Research Service Culture Collection, also known as NRRL, made in connection with a utility patent must be made publicly available after issuance of the patent; seeds deposited in connection with a PVPA are generally not publicly available. Publicly available seeds make the patent easier to infringe.

- It is possible to obtain a plant patent but not a utility patent on an asexually reproduced plant that is discovered in a cultivated area. Therefore, if such a plant variety is actually isolated from a cultivated area, a plant patent would be the only protection available.

From https://www.cof.orst.edu/cof/teach/ag...r%20plants.pdf

[Beta Test Team]

So all in all, the plant patent while useful, isn't much better than well written contract between the plant breeder and the customer. It's the utility patent that really gives strong protection for the plant breeder, for example, against a copying breeder trying to re-create that patented plant. And the plant variety protection certificate offers protection from use of the plant for breeding by other breeders, while a plant patent does not.

Here's something I wrote in a different thread about how Cannabis breeders and some clone sellers handle this situation currently (due to patents not being possible at this time). (The source material is a IP/patent attorney who works with the Cannabis industry):

This is pretty common, where a contract stipulates the grower can't breed with or share, or in some cases even clone, the plants. In the case of not allowing even cloning the goal would be force the grower to buy clones (or seeds) for each grow.

If the breeder has the genetic 'fingerprint' of the plant it's trivial to get a test on suspect plants in terms of contract violation. How this works with the Cannabis industry, in terms of labs willing to do the work, I'm unsure.

[Beta Test Team]

A question I have that I haven't found the answer to yet, and I hope someone here can answer (and provide their source material):

- How does a cultivar fit into PVPA, that is, does a plant variety protection certificate consider a cultivar to be a variety?

[Beta Test Team]

[UPDATE: After speaking with USPTO I was told they will, in fact, grant drug Cannabis plant patents.]

It was pointed out to me that there are several(?) plant "patent in process" for Cannabis in the US, as a means to prove the USPTO will grant plant patents for drug Cannabis.

And while that may be true, there's a big difference between 'patent pending' and actually being granted a patent by the USPTO. So if anyone knows of an actual plant or utility patent for a drug Cannabis plant please post info and links if possible.

Thanks!

[MJPassion]

Cultivar means (culti)vated (var)iety.

Websters Dictionary

However, if those terms are used within the legal wording, a legal definition may be appropriate.
I cannot find one in Blacks Law Dictionary or Barrons Law Dictionary.

[Beta Test Team]

Thanks.

Cultivar and variety are defined differently according to different international plant naming systems. This is why I'm wondering how the USPTO would consider the issue. I'll likely call them tomorrow and ask, or at least send an email and ask. I strongly suspect they do consider a cultivar to be a variety in the context of their rules language.

According to the most relevant naming system, ICNCP (International Code of Nomenclature for Cultivated Plants), cultivar is equivalent to variety in the context of this thread:

"International Code of Nomenclature for Cultivated Plants"
(8th edition)
https://www.actahort.org/chronica/pdf/sh_10.pdf

Variety: Term used in some national and international legislation for a clearly distinguishable taxon below the rank of species; generally, in legislation texts, a term equivalent to cultivar. See also: cultivar and variety (varietas).

Cultivar: An assemblage of plants that has been selected for a particular character or combination of characters and that is clearly distinct, uniform, and stable in these characters and that when propagated by appropriate means retains those characters (ICNCP Art. 2.3).

[Beta Test Team]

Of interest about the issue of cultivar and variety, as it relates to the U.S. PVPA (Plant Variety Protection Act), is the definition of variety by UPOV (The International Union for the Protection of New Varieties of Plants). This sounds like they're describing a cultivar, as well, especially considering what the ICNCP (International Code of Nomenclature for Cultivated Plants) has to say (in the post above):

https://www.upov.int/about/en/upov_system.html#P78_3918

Plant Variety

Although the rank of species is an important botanical classification, it is clear that the plants within a species can be very different. Farmers and growers need plants which are adapted to the environment in which they are grown and which are suited to the cultivation practices employed. Therefore, farmers and growers use a more precisely defined group of plants, selected from within a species, called a "plant variety". The UPOV Convention definition of a plant variety starts by stating that it is "a plant grouping within a single botanical taxon of the lowest known rank, ..." This confirms that a plant variety results from the lowest sub-division of the species. However, to understand more completely what a plant variety is, the UPOV Convention (Article 1(vi)) defines it as:

"a plant grouping within a single botanical taxon of the lowest known rank, which grouping, irrespective of whether the conditions for the grant of a breeder's right are fully met, can be

- defined by the expression of the characteristics resulting from a given genotype or combination of genotypes,

- distinguished from any other plant grouping by the expression of at least one of the said characteristics and

- considered as a unit with regard to its suitability for being propagated unchanged;"

This full definition clarifies that a variety must be recognizable by its characteristics, recognizably different from any other variety and remain unchanged through the process of propagation. If a plant variety grouping does not meet these criteria, it is not considered to be a variety within the UPOV system. However, the definition also makes clear that this is irrespective of whether the conditions for the grant of a breeder's right are fully met and this is not, as such, a condition for determining if a variety is eligible for protection. The conditions for protection of a variety are set out in Section IV (c) of this document.

[Chimera]

Good for you for starting your education on the topic Beta, it's great that you are taking the time to form a basis for a discussion.

The original thread is linked below for the reader's reference and context, the conversation really starts to develop around page 4 or 5.

https://www.icmag.com/ic/showthread.php?t=298710

In regards to your question, there are no plant patents for cannabis as of this date that have been granted by the USPTO, only some under review. However, in a article I recently read a patent attorney claims the patent office seems to be treating them in the same fashion as they treat any other application.

-Chimera

[Beta Test Team]

Yup, and many things claimed by some people in that thread didn't turn out correct...did they, Chimera?

But please don't bring up that thread again in this thread, let's keep this thread clean. This thread is based on facts, and I'd like to keep it that way.

Do you have a link to that article about the patents? Just for the sake of this thread. And I personally would be really interested to read it. Thanks.

[Chimera]

I think the thread I linked is a good historical context and clearly the genesis of this one, and is a recommended read for anyone interested in the topic. I can understand why you would want to delete any memory of it though... a shame you deleted those last few posts, I never got the opportunity to read them.

No certainly not everything everyone said was correct, but I certainly stand by everything I said... as you keep digging, I assure you you'll gain more clarity and understand the points that were being made for your benefit.

If you keep looking Beta, you'll also find the article I reference above, no spoon-feedings here either though... as was stated previously, the journey of looking and educating yourself will lead to your best education, and I certainly don't want to deprive you of that educational experience.. it's looking great on you thus far, keep it up. I'm looking forward to you getting down to the nitty gritty, deep below the surface of the topic.

Enjoy your new venue, and your pursuit... the journey is half of the experience of getting to your destination!
-Chimera