Lingering question about Plant Patents

Plant Patents
, , , , , , , , , , , , , ,
1

I have been troubled for awhile wondering about the use of patented plants in breeding. From my understanding plant patents protect just the asexual propagules of the patented plant. Without an agreement with the patent owner (license) during the life of the patent one is in violation if they asexually propagate it.

I was informed this past spring that a number of years ago information regarding the use of plant parts of the patented plant are protected as well. I put a link to a powerpoint by Anne Grunberg from the patent office about plant patents. She works with plant patents and I should try to contact and ask her.

On slide 4 she writes about plant patents “Right to exclude others from making, using, selling, offering for sale and importing the plant, or any of its parts” On slide 18 she highlights utility patents and use of ovules, so for utility patents we definately cannot use them freely during the life of the utility patent. Fortunately, it seems hard to find a rose that has a utility patent associated with it. I suppose “blue” roses through transgenics will have a utility patent too. So for the basic plant patent it is written we can be excluded from using any of the plant parts. This can sure become limiting if people take it to the extreme of gametes and other things. For instance, if we buy a patented rose and cut a flower from it to “use” in the house in an arrangement that could be excluded. I understand the point that this is important to be put in place for import of cut roses for instance. In some countries people can grow plants with US patents if they get their hands on them and there really is no way to limit that, but if they try to sell those cut stems back into the US then there is some sort of exclusion now for sale of plant parts.

A breeder of other crops I met with this spring mentioned for some crops where they wanted to develop a seed variety(babies will be genetically different than parent due to segregation and crossing it with another parent and not asexually propagated), they opted to not use clonal parents with a plant patent in breeding as they feared someday there may be a conservative interpretation of this understanding of plant parts.

It seems like we recognize that as long as we are using patented plants sexually as parents we are fine as the offspring are different. I just want to learn more about this idea/topic if more is known/written about. I really would like to believe we can continue to freely use patented plants in breeding, but want to make sure. Perhaps this is something that is yet to be determined through litigation in the future. Perhaps if there is a very unique / important parent that everyone uses and it would be profitable for the patent owner to press this issue, it can be interpreted more clearly by the courts.

I’m looking forward to others thoughts and learning of any resources known of on the topic.

Thanks,

David

Link: www.aipla.org/Content/Microsites101/Biotechnology/Committee_Documents92/USPTO_Partnership_Meeting_with_Biotech__Chem___andamp;Pharma/March_2008_BCP_Meeting/PlantPatentProtection.ppt

2

Since centuries the rule is that when you buy a living being you can dispose of its sexual progeny be it a rose or a dog.

Asexual propagation (for profit) is forbiden. As is selling parts such as cut flowers from a plant that was grown without paying pending patents.

There is a legal novelty that allows ownership of an artificial genetical modification in all living beings as well as progenies. Here only gamete use is clearly restricted and sales subject to (paid) originator’s agreement.

3

I’ve always wondered about things such as the amaryllis which produces offsets no matter what. If that amaryllis is patented can i give the offsets away? I guess the same applies to stoloniferous roses.

4

It’s not in the original plant patents.

I visited the National Agricultural Library, and in the special collections room there was a guy researching a particular apple in catalogs from a specific year. The woman who runs the collections brought out a book about the early plant patents…and the early ones were pretty bland. Mostly roses and lots of sports. Some of the quibbling about what made a new patentable plant considered methods of propagation, but the 84 patents (I did read the book) didn’t begin to touch on the way the law has been extended.

It’s the extensions by interpretations that are the kicker here.

Odd thing, though. A lot of the magazine articles from back then talked about how wrong it was that plant makers were not getting a penny from their efforts. Luther Burbank was mentioned prominantly in some magazines. Reading through that book, it turns out that a lot of Burbank’s creations did get patented, not by him but by his heirs. The rose Apple Blossom was PP 62 for Burbank’s estate as well as PP66, again for Burbank’s estate for a hardy yellow climbing rose that was not given a name. PP 70 was for a rootstock and PP72 was to divisions of a particular plant, but (for reasons unknown) didn’t include the plant itself.

The book is “The First Plant Patents” published in 1934 by Allyn and it included Abstracts of 84 patents and the History of the Law.

In comments was that the government paid $223.75 to print 203 copies of a color plate for a patent, and then (by law) the whole patent with color plate was sold for ten cents each, with no provision to reprint.

5

I have a book about him. I forgot the name, but it shines a huge light onto the advent of modern horticulture and how we got where we are. He was fascinating.

My friend has a dual degree in botany and crop science. Another friend once asked us, “What is the difference between you two?” My friend jokingly said, “A botanist looks at a plant and systemizes it. A horticulturist looks at a plant and pawns it off to others.” I looked at my friend and said, “Oh great! Why don’t you just call me a man-slut while you’re at it!”

Anyways, it reminded me of Luther Burbank and how he redefined the meaning of horticulturist.

6

Hi David,

Actually, I would like to see someone challenge the use of a patented variety (non-GM) in breeding and then go about proving, at a gene level, that such-and-such a gene originated from their variety only to have it thrown out of court… and in doing so setting a precedence. On the other hand I might just list all my parents from here on as ‘unknown’.

On a more serious note this is something I want to learn more about here in Australia too… I understand patents from other countries don’t usually hold up here… but I am interested in developing better (i.e. cleaner) glasshouse roses too (among many other goals) as local florists have said they would buy as many cut flowers off me as I can produce. If I purchase known glasshouse varieties and grow them I can only do so in limited numbers, or numbers strictly controlled by the distributors of these roses and this adds a significant chunk to the production costs of producing cut flowers because I’d have to pay for the privellege of growing them. On the other hand, if I purchase several cut flower varieties and then hybridise them and produce my own varieties then I can produce them enmasse at no extra cost to me at all… greatly reducing my production costs. I visted a commercial glasshouse grower and she told me to be careful who I mentioned this too as the patents on these plants makes using them in hybridising illegal without permission. I just let it go thinking she didn’t really undestand the whole plant patent idea but it has sat in the back of my head as well… another question in the back of my mind is that patents say you cannot sell any propagating material from the patented plant. So… one of my glasshouse varieties is ‘First Gold’. If I cut the flowers from this do I need an additional license to sell them on because someone can easily propagate the plant from the budwood or cuttings? Are the blooms classed as propagating material or blooms? When fruit growers purchase new varieties of a fruit tree they are allowed to sell the fruit of that varieties, but I guess this cannot be considered propagating material. The parents of one of my students owns a strawberry farm here. He was telling me that when they purchase new plants they need to sign an agreement that they will not use these new plants to propagate new plants or use them in hybridising. I don’t know how legally binding this agreement is or whether it is a marketting strategy to encourage exclusivity but I have told him I would be interested to talk with his parents and see this document.

On another note… I would like to see different powers built into patents too… like conditions… e.g. my rose ‘X’ can never be propagated by grafting to ensure my variety remains virus free and it continues to grow as an own-root as I had planned when making the cross and selecting the seedlings.

7

I think if you look at the RHA newsletter that came out the beginning of 2008, you will find that I’ve written a fairly detailed discussion on utility patents vs plant patents and plant breeders rights(Variety protection act). Also a website is cited where a lawyer goes through it in much more detail. Seeds of a GM rose would carry reach-through rights of the original owner. For conventional breeding of roses that are under conventional plant patents, we’re OK. Amaryllis are perpetually patented because they are clones. Seed geraniums or impatiens or begonias are probably protected under PBR.

Restrictive sales agreements are usually just that- like property covenants- the seller can control the buyer if the buyer really wants what the seller has to offer.

8

David, the plant patent law was amended in 1998. The law used to read,

“In the case of a plant patent the grant shall be of the right to exclude others from asexually reproducing the plant or selling or using the plant so reproduced.”

The current law reads:

In the case of a plant patent, the grant shall include 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.

Congress amended the protection of the plant patent to include the language about parts of plants because parts of patented plants were being produced outside the USA, imported to the USA, and then sold or used to produce plants. You can read about the Congressional intent here:

http://uscode.house.gov/download/pls/35C15.txt

The crux of plant patent is protection against asexual propagation of patented plants, whatever the source of the vegetative material. The law was not amended in 1998 to prohibit the use of patented plants by other hybridizers’ breeding programs.

Pierre describe’s the breeder’s exemption, which has become a subject of controversy. Plant Variety Protection statutes have an explicit provision, the Breeder’s Exemption, that recognize that plant breeders can use protected plants (those subject to PVP) in breeding programs. The US patent law contains no such provision. You can read plenty about this developing area of law by googling “plant patent breeder’s exemption”. You’ll find dozens of pages of reading, including information distinguishing plant patents from utility patents of plants. You’ll see there is also a concept of “researcher’s exemption” to promote scientific research. Here are a couple of good links:

http://www.sciencemag.org/cgi/data/306/5700/1295/DC1/1

I believe it’s a mistake to assume that because US patent legislation does not contain a breeder’s exemption, a US court would find an infringement in the use of patented plants for plant breeding. Sooner or later, the USA will need to bring its statutes into agreement with international trade law.

Link: www.patentlens.net/daisy/bios/1234.html