Plant Patenting: A Public Fruit ’s Assessment

James N. Moore1

Additional index words. plant proprietary rights, utility patents, trademarks, fruit breeding, fruit

Summary. The strategy of plant patenting as a means to generate research funds is gaining increasing interest in fruit breeding programs in public institutions. Patenting can be a positive force in maintaining fruit breeding programs if applied to superior cultivars and supported by well-designed licensing and distribution procedures. To qualify for a plant patent, a must be distinct, new, and asexually propagated, and cannot be in public use or on sale more than 1 year prior to the application for patent. Plant patents provide protection only for the whole plant as described. In contrast, utility patents can be obtained to provide proprietary rights to individual plant genes, plant characteristics, and plant products. The possible impact of utility patents on future fruit breeding programs is discussed.

n 1930, after many years of debate, the U.S. Congress enacted the Townsend-Purnell Plant Patent Act, which states, “Whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and new found seedlings,I other than a tuber propagated plant or a plant found in an uncul- tivated state, may obtain a patent therefor,. . . ”. A plant patent provides that the patent holder has the exclusive right to asexually reproduce and sell the patented variety for a period of 17 years. The noted fruit breeder Luther Burbank was a strong advocate of plant patenting. In committee, Congressman Purnell quoted Burbank’s writings on cultivar protection, one of which stated: “A man can patent a mousetrap or copyright a nasty song, but if he gives to the world a new fruit that will add millions to the value of earth’s annual harvests, he will be fortunate if he is rewarded by so much as having his name connected with the result.” (Janick et al., 1983).

Department of Horticulture and Forestry, University of Arkansas, Fayetteville, AR 72701. 1Distinguished Professor of Horticulture. Published with the approval of the Director, Arkansas Agricultural Experiment Station.

262 HortTechnology • July/Sept. 1993 3(3) The enactment of the Plant Patent Act Plant patent applications should include greatly stimulated the breeding and develop- a complete detailed description of the charac- ment of asexually reproduced plants, includ- teristics of the plant, expressed in botanical ing fruit crop species, among private breeders terms, that distinguish it to the extent pos- because, for the first time, they had a mecha- sible from other cultivars of the species. The nism for protecting their investments in new distinction may include biochemical differ- variety development. The utilization of plant ences as well as morphological differences. patents was not adopted immediately by pub- The application also must include the origin lic institutions, such as state of the new plant and state the manner in agricultural experiment stations and the which it has been asexually reproduced. If USDA. In fact, only in recent years has plant color is a distinctive feature of the plant, the patenting been pursued by a few experiment color should be stated in reference to a recog- stations, while many still shun the process. nized color dictionary. The debate still continues on the propri- In addition to the specified origin, nov- ety of public institutions to patent plants. elty, and asexual reproduction of a plant, the Opponents point to ethical (development variety must be new, in the sense ofutilization with public funds) and professional (limiting and publication of its characteristics. The germplasm exchange) reasons to avoid pat- patent statute states that the invention (plant enting. Proponents dismiss these arguments variety) cannot be patented if “The invention on the grounds that only users of the new was patented or described in a printed publi- cultivars pay for their development and that cation in this or a foreign country or in public patenting does not necessarily restrict germ- use or on sale in this country more than one plasm exchange. An overriding argument in year prior to the application for patent in the favor of plant proprietary protection by pub- United States...”. (U.S. Dept. of Commerce, lic institutions has emerged in the past de- 1980). cade. That is, if breeding programs are to It has been held, however, that a printed survive, they must generate funds to pay most publication, which would bar a utility patent, of the cost of the programs (Janick et al., is not a bar to a plant patent on the ground 1983). This fact has prompted many public that a publication is nonenabling for a plant institutions to reconsider the advantages of (Seay, 1993). The public use or sale of the proprietary plant protection. plant more than 1 year prior to patent appli- While the generation of funds from roy- cation is a bar to plant patent issue in the alty fees is an important result of plant patent- United States. ing, there are other advantages to patenting The costs of plant patenting are reason- superior genotypes of plants. A plant patent able. Nonprofit organizations, such as uni- establishes ownership of a plant cultivar, and, versities, may be assessed reduced charges as such, provides deserved credit to the inven- upon filing a declaration claiming small entity tor of that cultivar. Patents also allow inven- status. Nevertheless, the commercial poten- tors to govern the distribution and use of tial of the new cultivar should be assessed to their plant inventions. determine if patenting is warranted. This U.S. plant patents are administered by usually is accomplished by controlled testing the Patent and Trademark Office, an agency over a wide geographic area prior to naming of the U.S. Dept. of Commerce, in contrast and patenting. to the Plant Variety Protection program for The time period between the filing of a seed-propagated plants, which is adminis- plant patent application and the examiner’s tered by the USDA. determination may range from 6 to 18 months. Applications for plant patents are made to The protection afforded by a patent does not the Commissioner of Patents and Trademarks start until the actual grant of the patent. Some and must follow the format of all patent appli- breeders, and their licensed nurseries, mark cations: 1) a written document comprising a plants sold prior to actual patent issue as specification (description and claims) and an “patent pending” or “patent applied for,” oath or declaration; 2) a drawing (or photo- but these terms have no legal basis of protec- graph) depicting the characteristics of the new tion. variety; and 3) the filing fee. The specification All patented plants sold should be la- must be framed in specific order of arrange- beled clearly with the words “U.S. Plant ment: 1) title of invention (cultivar name); 2) Patent” followed by the patent number, and brief summary of invention; 3) brief description breeders licensing nurseries to propagate and of the drawings (or photographs); 4) detailed sell their patented cultivars should require description; 5) claim or claims; and 6) abstract that such labeling be done. Otherwise, the of the disclosure. The entire application must patent holder may have difficulty in recover- adhere to specific preparation guidelines, spelled ing damages from an infringer who was not out in publications obtainable from the Patent duly informed of the protected status of the and Trademark Office. cultivar.

HortTechnology • July/Sept. 1993 3(3) 263 A plant patent is personal property and must be done by the patent holder or its may be sold or assigned to others. Most licensees. Violations of plant patents usually universities have a patent policy, usually re- take one of two forms: 1) disreputable nurs- quiring that patentable items be assigned by eries knowingly propagating and selling pat- employees to the university if the inventions ented plants, or 2) growers propagating pat- were made on university time and expense. ented cultivars to increase their plantings. The university then may assign a portion of Unfortunately, it is a common belief among royalties from the invention to the inventor. fruit growers in the United States that the The university also may return a portion of plant patent law is only applicable to selling royalties to the research program that gener- patented plants, and that multiplying plants ated the invention to fund further research in for one’s own use is legal. In fact, such that area. multiplication is the same violation as illegally After a plant patent has been obtained, propagating for sale, but it is difficult to the breeder and the university must deter- monitor. In our program, we monitor illegal mine the best method to commercialize the nursery propagation by annually requesting new cultivar. A few universities have propaga- sources of plants from all retail sources known tion facilities, or plant materials components, to advertise our patented cultivars for sale. capable of multiplying and selling plants to Response has been good, and we have uncov- growers. However, most universities choose ered some violations. to issue licenses to commercial nurseries for University of Arkansas licensing con- propagation and sale of patented cultivars. tracts specify that the obligation for paying Licensing can be either exclusive (to one royalties lies with the licensed nursery that nursery) or non-exclusive (to a number of propagates the plants for first sale. Thus, if nurseries). There are advantages and disad- one licensed nursery sells to another licensed vantages for both systems, and the choice nursery for resale, the royalties are the re- may depend on the type of plant cultivar sponsibility of the nursery propagating the being commercialized, the number and size plants. We require that each licensed nursery of nurseries propagating the plant type, and provide us with an accounting of plants sold the scope of the potential market. It should each year. Most do this by sending copies of be the university’s goal to choose a licensing computer printouts of individual sales for the system that will expose the new cultivar to the year. While there may be some slippage in the most rapid and widespread distribution, both enforcement of our plant patents, nursery from the standpoint of greater return of violations are kept to a minimum by selecting royalties and for the greater public good. At honest, reputable nurseries for licensing and the Univ. of Arkansas, we usually issue non- by monitoring mail-order outlets. exclusive licenses to reputable U.S. nurseries, in which we select local, regional, and na- Foreign plant patents tional nurseries to propagate the new culti- Many good fruit cultivars prove to be var. For foreign patents, we usually issue widely adapted and often are grown commer- exclusive licenses (see later section on foreign cially in countries outside the United States. patents). Because the proprietary rights granted by a Licensing contracts with nurseries should U.S. patent extend only throughout the ter- be in the form of a legally binding document. ritory of the United States and have no legal The contract should state clearly and con- standing in foreign countries, the breeder of cisely the conditions of propagation and sale a new fruit cultivar may wish to apply for plant required by the patent holder. Some such patents in countries in which the cultivar may conditions might include the maintenance of be used. The patent laws and requirements the germplasm to ensure trueness to name, for patent application vary greatly among plant health, etc. Labeling requirements as to countries and must be determined in advance the protected status of the cultivar should be of submitting an application for patent. stated clearly and enforced. Any conditions Many countries now follow the standard required for sales to other nurseries or retail- guidelines and procedures for granting - ers should be listed. The amount of royalty ers’ rights developed in 1961 by the Interna- fee should be stated, along with the time and tional Convention for the Protection of New method of making royalty payments. Condi- Varieties of Plants (revised 1972, 1978, 1991) tions for possible termination of the contract (UPOV, 1991). Breeders desiring protection by either party should be specified. for a new plant cultivar in a foreign country The plant patent grant confers to the should ascertain if that country is a signatory patent holder “the right to exclude others to UPOV, and then follow the established from making, using or selling” the patented procedures for applying for variety protec- cultivar for a period of 17 years. While federal tion. UPOV allows the filing of a foreign law backs the protection given by a plant application for 4 years (6 years for trees and patent, the actual monitoring of violations vines) after the date of first commercial sale or

264 HortTechnology • July/Sept. 1993 3(3) use of the variety authorized by the breeder. market any fruit tree variety. To fruit breeders This time bar is less restrictive than for do- and nurseries, a strong valid trademark is an mestic patents, for which application must be increasingly important marketing mechanism, made within 1 year of date of first use. Addi- particularly after the patent has expired and tional information on UPOV regulations and the plant can be propagated freely by every a list of convention countries can be obtained one (Elliott, 1991). from UPOV, POB 18, 1211 Geneva 20, Confusion in the use of trademarks for Switzerland (fax 41-22-733-5428). The U.S. plant cultivars is created when trademark representative to UPOV is Dieter H. Hoinkes, names are made to appear as cultivar names, U.S. Dept. of Commerce, Commissioner of sometimes even being enclosed in single Patents and Trademarks, Office of Legisla- quotes, generally interpreted as a cultivar tion and International Affairs, P.O. Box 4, name (Darke, 1991). When a trademark is Washington, DC 20231. used in the marketing of a single cultivar, the One approach to foreign patenting of trademark always should be used in associa- fruit cultivars is to enter into an exclusive tion with the cultivar name (Elliott, 1991). A contractual agreement with a reliable nursery second problem occurs when trademarks that in the foreign country, with the nursery se- were used previously as well-established cul- curing variety protection in that country. The tivar names are used (Darke, 1991). nursery then recovers their legal fees from the A good review of the use and misuse of exclusive right to propagate and sell the cul- trademarks in plant property rights was pub- tivar in that country and remits the specified lished recently by Elliott (1991). royalties to the breeder. Most such nurseries insist on prerelease testing of the plant culti- Utility patents var to assure good marketability in their coun- The 1930 Plant Patent Act provides try. This testing can be done under a legally protection only for the whole plant as de- binding testing agreement. scribed. In 1985, the U.S. Patent Office A similar system may be used in the Board of Patent Appeals and Interferences United States whereby breeders of asexually ruled that the general Patent Act (the utility propagated plant cultivars enter into agree- patent) could be used to provide proprietary ment to sell their rights to a new cultivar to a rights for individual plant genes, gene combi- U.S. nursery. The nursery then prepares and nations, plant characteristics, plant products, files the plant patent application in the name and many other types of claims (Brooks, of the originator, who assigns the patent to 1990). the nursery. The nursery pays all costs of The extension of the utility patent to patenting, assumes responsibility for enforce- plants has resulted in concern and speculation ment, and pays royalties to the breeder (Hut- among plant breeders as to its effect on plant ton, 1991). cultivar development. Under the 1930 Act the sexual reproduction of patented cultivars Trademarks is not an infringement, nor is any biological Trademarking is a form of proprietary material derived from sexual reproduction of protection indicating source or origin. Un- the plant. In contrast, it appears that the like a plant patent, which excludes others utility patent may prohibit the transfer of from propagating a plant cultivar for 17 years, individual protected genes or characteristics the life of a trademark can be indefinite. via sexual breeding (Brooks, 1990). Further, Today we are seeing more and more trade- the patenting of specific plant traits could marks used in the marketing of fruit cultivars. greatly restrict plant breeding programs and Trademarks have been misunderstood affect adversely the free exchange of germ- and, in some cases misused, leading to confu- plasm that is the lifeblood of plant cultivar sion in the nursery trade (Darke, 1991). A development. Whether these concerns be- trademark is intended to indicate origin or come reality will be determined by future source of a plant cultivar and cannot be the experience with utility patents as applied to name of the cultivar. For this reason, nursery plant germplasm. catalogs may use a trademark for marketing purposes, while clearly listing the proper cul- Conclusions and perspective tivar name. For example, Stark Bros. catalog The patenting of new fruit cultivars de- lists Starkspur® UltraMacTM (Dewar cultivar) veloped by public institutions is a viable strat- apples, thus presenting both a trademark and egy for generating research funds to support a cultivar name. When the plant patent ex- the continuation of fruit breeding programs. pires on this apple after 17 years, Stark Bros. During the past decade, several state univer- will have no control over the propagation and sity fruit breeding programs have been dis- sale of the Dewar cultivar, but they will still continued due to lack of support funds. As have legal right to exclude others from using state and federal support for public institu- the trademark Starkspur® or UltraMacTM to tional research continues to decline, many

HortTechnology • July/Sept. 1993 3(3) 265 more programs are in jeopardy and likely will force in public plant breeding programs, the be lost, The loss of public fruit breeding widespread use of utility patents, based on programs has serious consequences for fruit current interpretation of the law, could prove growers and consumers alike. Unlike most to be disastrous to plant breeding progress. If seed-propagated crop species, private indus- public plant breeding is to meet the industry try is not likely to fill the void in the breeding needs of the future, the traditional philoso- of fruit species. The high investments re- phy among breeders of free exchange of quired in land space and labor, coupled with germplasm and information must be main- the long generation cycle of fruit species, tained. Any interference in this operating does not encourage private development of principle would not be in the best interest of most species. Furthermore, only public insti- society. tutions have the staff and other resources to support the kind of interdisciplinary research Literature Cited (biotechnology, plant pathology, entomol- ogy, food science, etc.) that is needed to Brooks, H.J. 1990. Introduction. Genetic resources support plant breeders in the development of of temperate fruit and nut crops. Acta Hort. 290:xi-xvi. successful fruit cultivars for the future. An- other often overlooked concern is the train- Darke, R. 1991. A curator’s viewpoint. HortScience ing of future plant breeders. If university 26:362-363. plant breeding programs cease to exist, who Elliott, W.H., Jr. 1991. Property rights and plant will train the plant breeders for private indus- germplasm. Hortscience 26:364-365. try? Plant breeding is both an art and a science. I am convinced that students of plant Hutton, R.J 1991. New funds for plant breeding. breeding can be prepared for successful ca- HortScience 26:361-362. reers only by being trained in active, success- Janick, J., R.E. Bagwill, and J.R. Nesbitt 1983. ful breeding programs. Therefore, universi- Cultivar release and protection, p. 383-397. In: ties have an obligation to society not only to J.N. Moore and J. Janick (eds.). Methods in fruit produce new plant cultivars needed for the breeding. Purdue Univ. Press, W. Lafayette, Ind. future, but also to educate plant breeding Seay, N.J. 1993. Intellectual property rights in professionals to continue the work. plants. Intellectual property rights: Protection of Based on these stated philosophies, it is plant material. ASA Spec. Publ. (In press.) apparent that the continuation of public plant breeding programs is for the public good. UPOV. 1991. International convention for the protection of new varieties of plants. UPOV Publ. Specifically, the continuation of public fruit No. 221(E). breeding programs is critical to the continued well- being of the fruit industries of the United U.S. Dept. of Commerce. 1980. General informa- States. Plant patenting is a mechanism avail- tion concerning patents. U.S. GPO, Washington, able to supplement declining public funds for D.C. 1980 0-327-741. plant breeding programs and to rescue some programs from oblivion. While plant patents can be a positive

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