To register or not to register?

I’m beginning to wonder whther I should have registered a couple of my hybrids that are showing commercial potential. I know certain suppliers prefer not to offer cultivars already registered. Any thoughts? Thanks, Robert

I don’t have anything on the market yet in any big way, but from what I hear it may be better to wait. There are some clauses that if a plant is disclosed (definately the disclosure part is the case for utility patents I’m not sure about plant patents) / available for sale for a year before a patent is applied for it violates the elligibility to get a patent. Also, if it’s a big marketer they may like to have the ability to name the plant or at least be involved in the process. Proven Winners picked out the name ‘Tuscan Sun’ for my new heliopsis cultivar coming on the market. They asked if I had any serious objections and I didn’t. The patent was filed a month or so ago, within a year of it being “disclosed” and featured at the California Pack Trials last April. I registered some roses to honor some friends and one as a fundraiser for a campus group, but didn’t consider a broader market for these roses and patenting. I guess it’ll depend on the outlet or purpose of a new rose for the future when I register it. I think I’ll resist registering early for roses that may be commercially introduced.

Sincerely,

David

You confirm my suspicions David. Unfortunately seedlings can languish for years before anything is decided. I’ve seen successful breeders do just as you say, keep some back for testing and register others as matter of course. I guess it depends on how confident and patient one chooses to be? Thanks, Robert

David,

Do you think that putting a rose seedling up on a personal web site would fall under being ‘disclosed’?

Rob, that is an interesting question. I would certainly hope not. I have had nothing commercially released and I have only registered one seedling to date (and that one was registered because an individual bought the naming rights). However, I have not been registering any of the other seedlings because I would hope to eventually have one of them in a test trial somewhere and then picked up for commercial release. Sure, it is a long shot…BUT, if there is a chance with some of my more promising seedlings I don’t want to close the door before I even get to the doorstep so to speak. Now, I do post my seedlings on the web both on a personal site and a forum site. So, if that is considered disclosing, then that would pretty much take out all of my promising seedlings.

Robert, yes…patience is the hard part. I have a few seedlings that I have given unofficial names to and would SOOOOOO love to register. But, those favorites also happen to be the most promising, and therefor require that I wait until something can be done with them in testing and/or hopefully some official trials.

Michelle, one would hope that a personal web page wouldn’t be considered ‘disclosing’ them but who knows. Hopefully someone here will have the answer. I would be disappointed to find out that it is disclosing.

Michelle, I’ve found often whether a rose is picked up for commercial introduction or not, often is reliant on factors that have nothing to do with the quality of the introduction.

Much of it is about timing and marketability. We have to keep in mind that any company that supports an active hybridization program has a vested interest in their own product.

Literally dozens of beautiful seedlings go begging every season as they aren’t quite right for promotion for one reason or another.

Anybody that has grown test introductions for a large company knows that most will never see be introduced and some of them are very very good.

There are different ways of looking at the topic. Most of us that are trying to breed something that veers away from what is currently offered don’t stand much of a chance against those that hybridize for a living.

It’s clear hardy no-spray shrub roses are finally getting some attention. Large growers won’t take a chance on any formula that doesn’t work until they are forced to change by market demand.

"Literally dozens of beautiful seedlings go begging every season as they aren’t quite right for promotion for one reason or another. "

I also remember seeing somewhere that major cooperation breeders are often angry that the seedlings they say are superior are often passed over because the company wants something specific.

That’s kind of sad, imo.

This could be a very touchy subject. A few years ago, I was trying to patent a seedling. The patent examiner cited photos from my private (non-commercial) website as evidence of disclosure (they included photos from my website in their correspondence). I had the opportunity to contest it, but it happened during a time when I wasn’t able to, so didn’t.

What is ridiculous, is the notion that disclosure of parentage somehow can disqualify a seedling because the “secret” cross might mean that others can make the same rose. It’s as though breeding roses is like making cookies.

I still put photos of my seedlings on my website, but don’t include a proposed registered name. The photos then are not connected with a particular rose.

It would be enlightening and interesting to get legal advice on this.

Jim Sproul

Robert, some excellent points there. There certainly is much relying on what the big companies consider to be the area of interest for marketability at that time. However, to shift the tide of what is a proven formula for them, I think a bit of straddling the fence is needed to make that happen. In other words, roses that are similar to what they tend to want to release, but perhaps go slightly in another direction. Gentle transition can sometimes be more effective that an abrupt change. In some ways, I think we might be seeing that begin to happen.

Yes Jadae, I agree…that is very sad.

Jim, thanks for sharing that information. I post a lot of roses on my personal website as well. Did they actually cite that advance disclosure of the parentage prevented the patent? If that is the case I will have to be even more careful about how I post my seedlings on my website. Most of the code names I use make it very easy to decipher parentage…which I’ve never really cared about sharing…since we all know it isn’t like making cookies (to use your analogy).

Jim, Vincent Gioia could probably answer your question. If you need contact information let me know.

I too am surprised by how “touchy” the whole subject is.

The big question is how economically wise is it to patent a rose, and at what point do we know to take the plunge?

Wow Jim, that’s sad about the pictures on your website effecting your patent ability. I have some data on pollen diameter I’m putting in a manuscript and there are a few advanced selections from the U of MN rose breeding program included. The paper contains pedigree information. At least the U of MN lawyers thought that I could use the codes for the roses and pedigrees and things will be fine, just like Morden Snowbeauty and Morden Sunrise were coded varieties in Xue and Davidson’s 1998 paper on blackspot resistance. My old advisor had a lot strange questions come back to him from patent examiners, some of which was clear lack of understanding of standard botanical nomenclature. It sounds like there is a large turnover rate of patent examiners. Maybe inconsistency in part is due to that. In recent years it has been exceedingly hard to get utility patents on unique plant traits. Supposedly that has been due in part to a poor decision to grant a utility patent to some trait and introgression effort into yellow bean. Due to being embarassed for such a patent going through and receiving lots of flack, the patent office has gone so far the other way now that it has been exceedingly difficult for what would seem to be legitimate utility patents (not plant patents) to be granted. My advisor dropped the lily patent he submitted and some flower seed companies eventually dropped most of theirs as well.

That’s a great question about when is wise to take the plunge to patent. If there’s a company interested in introducing a rose they will often help get one with contacts they might have in terms of patent lawyers and such. I wrote the heliopsis patent of the new introduction of mine and my old boss that Proven Winners is picking up. Either the patent holder or a licensed patent attorney can submit the patent. We need to do a really good job with it so it doesn’t get sent back to us and we pay resubmission fees. Harvey Davidson has helped and encouraged many of us on the process. A great idea he uses is just to use the basic framework for the type of data to collect from patents you can read on the type of plant you are interested in patenting. The basic information for rose patents is pretty standard even as you look at patents from differet rose breeders. Replace the data with that of your plant and take your own pictures without doing it in direct sunlight. He also mentioned that there is a discount in fees if you can claim small entity status. I wasn’t able to do that on the heliopsis supposedly because Proven Winners is introducing it. I don’t understand why because I am the one submitting the patent, not them. Anyways, I have a rose I really believe in and the nursery I am working with is hee hawing about it for some reasons not associated with its merit. I think I’ll begin to take the data for it for a patent this spring and summer and submit one hopefully using small entity status and worry about recovering the cost later as I try to convince smaller nurseries to hopefully pick it up.

Sincerely,

David

For me the ideal situation would be to get a rose to market through a major rose house like Meilland. I had a seedling that went through testing by Meilland and The Conard-Pyle company. It was my understanding that should a seedling be taken for marketing that the company would buy the patent rights. To patent a rose is an expensive process for an individual to pursue.

Based on what I’m reading here I won’t be putting up parentage information or a potential registration name for new seedlings on my website. It would be great if someone could post some legal advise here.

That’s a great idea Rob if we could get some sound legal advice and clarified parameters. With filing fees and such and if you can get a small entity status the patent should be less than $700. If you get the nursery involved and they hire their licensed patent attorney, overall it can cost ~$3,000. That is a lot of royalty money to accumulate to pay off those costs before you get something from the deal. Anyways, them paying the fees and the first money coming in going to pay for it is the arrangement I have with that heliopsis, except that since I wrote the patent myself we omitted the patent attorney. Overall it will be ~$1,400 to recover before I get royalties. It sounds like maybe Conard Pyle does it differently with buying patent rights. I have to look over my information. Maybe I in essence did that too, but am still the inventor/patent holder, although I assigned the patent to Plant Haven which in turn works with Proven Winners. Is your arrangement a one time payment to the breeder and then they have control over the rose the rest of its duration on the market and you no longer get a royalty because of them buying patent rights?

Thanks,

Sincerely,

David

David, my seedling spend a couple of years in testing but it didn’t make it through to selection for marketing so I haven’t seen what royalty arrangements they have. I remember reading somewhere that when it comes to patent ownership many large marketers might obtain the patent right from the breeder if the breeder is open to that. It may be that this would affect the royalty payments but that’s only a guess. The marketer would want to make up the costs for patenting the variety I’m sure.

I wasn’t aware of the small entity status and the lower costs. That is good to know. I’ve always seen the $3,000 amount but as you mentioned that fee includes services for a licensed patent attorney.