Choosing the best plant variety rights in the USA: Which options are right for you?

Back in the 1930s, the United States became the first country to offer breeders the ability to protect their novel plant varieties. In the nearly 100 years since then, the US system has evolved such that breeders now have multiple intellectual property (IP) options that are available to them for protecting their novel varieties. Deciding which is most appropriate for a particular variety requires knowing the basics behind each of the three options and the business goals you are trying to achieve with the new variety.

Though numerous factors should be considered when deciding which types of variety rights should be obtained for a new variety, two primary considerations when selecting appropriate protections are (1) whether the new variety will be reproduced asexually/clonally or sexually/seed and (2) what activities you are trying to stop others from doing with the new variety.

IP RIGHTS DIFFER ON HOW THE PLANT IS REPRODUCED

Available variety protections differ depending on whether a variety is reproduced asexually (e.g., via cuttings or tissue culture) or sexually (e.g., via seed reproduction). If your variety can be bred only asexually or only sexually, the answer to this is clear. However, suppose the variety could be produced either asexually or via seed. In that case, the question should often focus not so much on whether the plant can be reproduced in a particular manner but rather on whether the plant would be reproduced commercially in a specific manner. For example, suppose commercial production of that particular plant species is typically done through seed. In that case, it may not be as important to focus on the asexual reproduction of the plant when considering a variety protection options.

IP RIGHTS ARE EXCLUSIONARY

Intellectual property rights are generally exclusionary in nature, meaning they give the holder the right to prohibit others from certain activities. The different variety rights that are available encompass different sets of exclusionary rights, so identifying what exclusionary rights you want to assert is an essential step in determining which type of protection you should secure.

Are you just trying to stop people from directly reproducing the variety? Are you concerned about a competitor using your variety to develop a downstream variety, such as an essentially derived variety or a new variety bred from your variety?

Are you concerned about the importation of harvested material into the USA? The answers to these questions can help you select the most appropriate protection for your particular variety.

THREE VARIETY RIGHTS OPTIONS IN THE USA

Unlike most countries, where there is only a single option for protecting a novel variety, there are three primary avenues available in the USA for protecting novel plant varieties: Plant patents, utility patents, and plant variety protection (PVP) certificates. The answers to the above inquiries will primarily guide the selection of the most appropriate and valuable variety rights for a particular variety.
Plant Patents

Plant Patent protection is available only to plant varieties that are reproduced asexually, not to seed-reproduced varieties. However, if the particular variety that you are protecting can be produced asexually or sexually, but it would not be commercially feasible to reproduce it asexually, then Plant Patent protection may not be appropriate even though it is available.

Plant Patents allow the holder to stop others from asexually reproducing the variety and from using, offering for sale, or selling those asexually bred plants throughout the USA or from importing the plant or any of its parts into the USA. However, Plant Patents do not generally give the holder the ability to stop someone who purchases a plant of the protected variety from using it to generate an essentially derived variety (“EDV,” such as a sport, mutant, or genetically modified version) or from breeding with the new variety. Plant Patents also do not prevent someone from reproducing the plant sexually (if that is possible).

Utility Patents

Utility Patents can be used to protect both sexually reproduced and asexually reproduced plant varieties. Utility patents offer the possibility of much broader protection than Plant Patents, which can include protection that prohibits anyone from breeding with the variety or using the variety to make an EDV and can even cover downstream varieties generated through such breeding programs.

On the other hand, Utility Patents are generally more costly than Plant Patents for several reasons, including increased government fees, increased attorney fees (due to the increased complexity of the filings), and the cost of making the biological deposit of seed or tissue culture material that the patent office for Utility Patents generally requires.

PVP Certificates

PVP certificates are issued by the United States Department of Agriculture’s Plant Variety Protection Office (PVPO). Though PVP certificates were originally only available for sexually reproduced varieties, since 2019, PVPs have been available for both sexually and asexually reproduced varieties.

PVP protection is generally intermediate in scope compared to Plant and Utility Patents, offering protection that stops someone from reproducing the variety sexually or asexually, from using the variety to generate F1 seed for sale, and from commercialising any EDV that is generated. However, PVP protection does not stop someone from breeding with the variety. Cost is also intermediate to Plant and Utility Patents.

SUMMARY CHART

A summary chart of these Variety Options is included to highlight their numerous differences. Another point to note is that these protections are not mutually exclusive but can be combined to provide a more robust “IP fence” around your new variety. That IP fence can be further strengthened by obtaining appropriate trademark protection over plants of that variety that are sold under particular branding. A graphical representation of the IP fences that can be constructed using these various options is also included in the diagrams to the right.

As this demonstrates, breeders have several options available to them in the USA for protecting their novel varieties. Breeders must consider multiple factors when selecting appropriate variety protections, including how the variety will be reproduced and what activities they are trying to exclude.

By thinking through these issues on the front end, you can help ensure that you have constructed an appropriately strong IP fence around your new variety, which helps to maximise the value you will get out of that variety and all of the breeding efforts that went into producing it.

This article was first published in the November 2023 issue of FloraCulture International. The author is Travis Bliss, a Wilmington, Delaware, office partner at Panitch Schwarze Belisario & Nadel LLP. His practice focuses on counselling, procuring, monetising, and enforcing IP rights within the life sciences space, including a focus on IP rights in the agricultural, horticultural, and cannabis industries.