Intellectual Property Protections for Cannabis Cultivars

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Cultivators
in
the
United
States
have
been
breeding
new


Cannabis

cultivars
since
the
1960s,
seeking
to
combine
or
enhance
cultivar
characteristics
such
as
yield,
flavor,
aroma,
potency,
and
neurological/physiological
effects.
Both
federal
legalization
of

hemp

(i.e.,
less
than
0.3%
THC)
and
increasing
state
legalization
of
marijuana
have
brought
about
considerable
financial
opportunities
for
companies
that
develop
commercially
desirable
cultivars.
But,
the
development,
refinement,
and
stabilization
of

Cannabis

cultivars
requires
substantial
investments
of
time
and
money.
However,
options
for
protecting
those
investments
through
intellectual
property
(IP)
safeguards
remain
limited
for
marijuana
cultivars. 

Relevant
IP
protections
for

Cannabis

cultivars
include
plant
patents,
plant
variety
protection
certificates,
and
utility
patents.
Below,
we
provide
an
overview
of
each;
but,
before
diving
in
further,
we
note
that
the
need
for
seed
deposits
to
obtain
certain
IP
protections
may
present
an
insurmountable
hurdle.
United
States
depositories
will
not
take
seeds
or
tissue
derived
from
marijuana
cultivars
(i.e.,
greater
than
or
equal
to
0.3%
THC).
Industry
innovators
would
be
well-served
by
considering
their
IP
strategy
before
federal
marijuana
legalization
removes
these
impediments.


Plant
Patents

Plant
patents
protect
any
new
and
distinct
variety
of
plant
that
has
been
asexually
reproduced.
Unlike
trademark
law,
patent
law
has
no
legal
use
requirement.
Consequently,
plant
patents
can
cover
both
marijuana
and
hemp.
All
that
is
required
is
that
the
cultivar
be: 


  1. novel
    —patentee
    was
    the
    first
    to
    discover
    the
    cultivar
    or
    breed
    and
    select
    it;

  2. distinct
    —differs
    from
    known
    related
    cultivars
    by
    at
    least
    one
    characteristic; 

  3. uniform
    —the
    cultivar’s
    characteristics
    are
    consistent
    from
    one
    plant
    to
    another;
    and

  4. stable
    —the
    cultivar’s
    characteristics
    are
    fixed
    from
    generation
    to
    generation. 

Asexual
reproduction
(i.e.,
cloning)
satisfies
the
uniformity
and
stability
requirements.
Plant
patents
permit
the
holder
“to
exclude
others
from
asexually
reproducing
the
plant,
and
from
using,
offering
for
sale,
or
selling
the
plant
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.” 

The
upside
to
plant
patents
is
that
they
are
relatively
inexpensive
and
easy
to
obtain;
moreover,
plant
patents
do
not
require
seed
deposits.
The
downside,
however,
is
that,
because
plant
patents
only
cover
plants
that
have
been
asexually
reproduced,
a
holder
of
a

Cannabis

plant
patent
will
likely
be
required
to
prove
that
an
alleged
infringer
used
a
clone
of
the
patented
cultivar.
Thus,
the
value
of
plant
patents
depends
on
potential
infringers’
need
to
use
a
clone
of
the
patented
cultivar. 
Accordingly,
the
productions
afforded
by
plant
patents
are
rather
narrow
as
compared
to
the
following
two
forms
of
protection. 


Plant
Variety
Protection
(PVP) 

Plant
Variety
Protection
(PVP)
certificates
generally
provide
broader
protections
than
plant
patents
because
they
protect
both
sexually
and
asexually
reproduced
cultivars.
Like
plant
patents,
the
cultivar
must
be
new,
distinct,
uniform,
and
stable.
PVP
certificates
permit
the
holder
to
exclude
others
from
various
activities
including
selling,
importing,
or
exporting
the
cultivar
or
using
the
cultivar
for
breeding
purposes;
just
Google
“7
U.S.C.
§ 2541”
for
the
list. 

The
upside
to
PVP
certificates
is
that
they
cover
sexually
reproduced
plants.
The
downside
is
that
the
applicant
must
deposit
at
least
3,000
seeds,
which
essentially
bars
patents
for
marijuana
cultivars.
The
term
of
protection
for
PVP
certificates
lasts
for
twenty
(20)
years
(twenty-five
for
a
tree
or
vine).
The
seed
deposits
do
not
become
available
to
the
public
until
expiration.
However,
PVP
certificates
are
subject
to
a
“research
exemption”
that
would
allow
a
person
with
access
to
your
protected
cultivar
to
use
it
in
a
breeding
program
to
develop
other
cultivars
for
non-commercial
purposes.


Utility
Patents

Utility
patents
offer
the
most
comprehensive
protection.
Most
utility
patent
filings
for

Cannabis

are
directed
to
extraction
methods,
product
formulations,
and
medical
uses.
Nevertheless,
utility
patents
can
be
extremely
useful
for
protecting
a
plant
and
its
parts,
including
everything
from
breeding
methods
to
genetic
modifications
(both
traditionally
bred
hybrid
plants
and
laboratory-made
transgenic
plants).
Utility
patent
protection
requires
that
the
invention
be:


  1. useful
    —the
    subject
    matter
    has
    a
    useful
    purpose; 

  2. novel
    and
    non-obvious
    —did
    not
    exist
    prior
    to
    being
    bred
    and
    selected,
    and
    was
    not
    an
    obvious
    combination
    of
    prior
    cultivars; 

  3. adequately
    described
    and
    enabled
    —sufficient
    disclosure
    in
    the
    application
    to
    allow
    another
    cultivator
    to
    make
    and
    use
    the
    claimed
    cultivar;
    and 

  4. not
    a
    product
    of
    nature
    —the
    invention
    involved
    human
    activity
    that
    transformed
    the
    subject
    matter
    from
    its
    natural
    state.  

Although
utility
patents
are
often
associated
with
high
costs
and
complexity,
these
factors
can
be
controlled
through
a
focused
approach.
For
example,
transgenic
plants
can
be
adequately
described
and
enabled
by
describing
the
method
of
producing
the
transgenic
plant
or
describing
the
gene
responsible
for
the
claimed
phenotype
through,
for
example,
depositing
the
sequence
of
the
gene
of
interest.
Satisfying
the
description
and
enablement
requirements
for
traditionally
bred
cultivars
can
be
difficult,
and
has
traditionally
been
accomplished
through
a
seed
or
tissue
deposit. 


Developing
an
IP
Protection
Strategy
for
Your



Cannabis


Cultivar

Before
seeking
patent
or
PVP
protections,
a
threshold
question
must
be
asked:
was
the
cultivar
commercialized,
offered
for
sale,
or
publicly
disclosed
more
than
one
year
prior
to
the
filing
date.
If
so,
an
application
for
a
patent
or
PVP
certificate
cannot
succeed.  

If
prior
disclosure
is
not
a
problem,
weigh
the
practical
considerations
associated
with
each
type
of
cultivar
protection
while
considering
(1)
where
in
the
breeding
process
you
are,
and
(2)
what
your
business
wants
to
achieve.
A
cultivar
exhibiting
a
desirable
phenotype
that
has
yet
to
be
stabilized
for
seed
production
may
be
an
ideal
candidate
for
a
plant
patent,
particularly
if
you
plan
to
maintain
that
cultivar
for
cloning.
If
you
can
surmount
the
deposit
requirement,
PVP
may
prove
the
preferred
protection
for
seed-propagated
plant
cultivars.
If
your
cultivar
has
specific
traits
obtained
through
extensive
development
and
aggregation
into
one
genotype,
a
utility
patent
may
alleviate
PVP
“research
exemption”
concerns,
assuming
you
can
overcome
the
current
deposit
issues
for
marijuana.

A
final
option
that
permits
you
to
stake
your
claim
is
to
file
a
provisional
patent
application
for
your
cultivar.
A
provisional
application
provides
the
applicant
up
to
one
year
to
convert
the
provisional
application
into
a
utility
patent
application.
This
buys
you
time
to
determine
if
you
really
want
to
jump
through
the
hoops
necessary
to
fully
protect
your
cultivar,
while
allowing
you
to
legitimately
mark
the
seeds
and/or
clones
as
patent
pending. 
 

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