Protecting Plant Inventions

• Author: Daniel J. Knauss - Erich E. Veitenheimer - Marcelo Pomeranz
• Position: Daniel J. Knauss is a partner at Cooley, where he litigates patent infringement and contract disputes concerning a variety of life sciences technologies, including cancer medicines, antiviral therapeutics, biofuels, agricultural technology, and medical devices. He can be reached at dknauss@cooley.com. Erich E. Veitenheimer is a partner at ...
• Pages: 44-65

©2019. Published in Landslide®, Vol. 11, No. 6, July/August 2019, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in

any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

Interest in protecting intellectual property (IP) for

plant-related innovations has grown in view of the

merger of high technology and agriculture, the glo-

balization of food sources, the increasing demand for

green energy, the rapid emergence of a legal cannabis

industry, and the growing public acceptance of plant

biotechnology. This article reviews the variety of ways

that plant-based inventions can be protected in the

United States, and discusses trends and developments

in those legal protections.

Forms of IP Protection for Plants

The United States has more forms of government-mandated

legal options for protecting plant-related intellectual property

than any other country. IP owners ling in the United States

may seek formal patent and patent-like protection for their

inventions by applying for a utility patent, a plant patent, and/

or a plant variety protection (PVP) certicate.1 In the United

States, these forms of legal protection are not mutually exclu-

sive,2 making it possible for innovators to obtain multiple

formal protections for their new vari-

eties, provided they meet the statutory

requirements for each form.

Utility Patents

While many countries have some restric-

tions on the patenting of living things,

almost any conceivable invention involv-

ing plants is eligible for patenting in the

United States. Utility patents have been

issued on a wide variety of plant-related

inventions, including: (1) methods of

breeding plants; (2) methods for produc-

ing transgenic or edited plants, including

using CRISPR technologies; (3) plant

parts and products, such as seeds,

starches, and gums; (4) herbal medicines and supplements; (5)

chemicals made by plants, including formulations compris-

ing avonoids, cannabinoids, alcohols, and resistant starches;

(6) non-naturally occurring amino acid molecules isolated from

plants, such as peptides and proteins; (7) non-naturally occur-

ring nucleic acid molecules isolated from plants; (8) plant cells,

including individual cells and plant tissue cultures; (9) individual

plants, such as inbreds, hybrids, and varieties, whether produced

through genetic editing or traditional breeding; and (10) groups

of plants, such as open-pollinated populations and synthetics.

Application and Deposit

Utility patents provide inventors with a limited period of exclu-

sivity in exchange for full disclosure of the technology to the

public. Patent applications must include sufcient disclosure

to enable a person having skill in the art to make and use the

invention. For example, utility patents for transgenic crops can

be enabled through a description of the nucleic acid sequence

of the transgene that is responsible for the claimed phenotype

(e.g., the gene providing the plant with glyphosate resistance).

Protecting Plant Inventions

Image: GettyImages

©2019. Published in Landslide®, Vol. 11, No. 6, July/August 2019, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in

any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

Protecting Plant Inventions

By Daniel J. Knauss, Erich E. Veitenheimer, and Marcelo Pomeranz

Daniel J. Knauss is a partner at Cooley, where he litigates patent infringement and contract disputes concerning a variety of life sciences

technologies, including cancer medicines, antiviral therapeutics, biofuels, agricultural technology, and medical devices. He can be reached at

dknauss@cooley.com. Erich E. Veitenheimer is a partner at Cooley, where his practice covers a wide variety of technologies, including plant

breeding, food science, and agricultural biotechnolog y. He can be reached at eveitenheimer@cooley.com. Marcelo Pomeranz is an associate

at Cooley, where his practice focuses on the drafting and prosecution of biotechnology patent applications and plant variety protection

applications, as well as assisting in the preparation of invalidity/noninfringement, freedom to operate, and patentability opinions. He can be

reached at mpomeranz@cooley.com. This ar ticle is for informational purposes only and does not constitute legal or other professional advice.

Enabling utility patents for nontransgenic plants that are pro-

duced via traditional breeding methods can be challenging, as

these inventions are less amenable to description on paper.

One way to satisfy the enablement requirement for plant

inventions is to supplement the application’s written descrip-

tion with one or more biological deposits. The U.S. Patent and

Trademark Ofce (USPTO) permits applicants to deposit seed

or other propagation material capable of producing the claimed

plants at an internationally recognized depository facility at

any time before issuance of the patent.3 These deposits are

treated as part of the applicant’s disclosure and can satisfy the

written description and enablement requirements.4

Feasibility of a Deposit

Before ling an application, applicants should carefully con-

sider the feasibility and cost of producing the deposit. Some

plants have long or difcult owering cycles that could pre-

vent the applicant from producing the required 2,500 seed

deposit.5 Tissue deposits present other challenges, as the appli-

cant must arrange for a depository with the ability to maintain

fresh viable tissue for long periods.6 Other legal factors may

also limit the ability of an applicant to complete a deposit—

cannabis seeds, for example, are not necessarily accepted by

any U.S. depository facility.7 Note, however, that the 2018

Farm Bill removed legal hemp (dened as containing no more

than 0.3 percent THC by dry weight) from the denition of

“marihuana” under the Controlled Substances Act,8 creating

the expectation that U.S. depositories should accept deposits of

legal hemp seed made in connection with patent applications.

Timing for a Biological Deposit

Applicants should also carefully consider the timing of their

deposits before ling the rst application to a biological inven-

tion. In the United States, applicants may delay submission of

biological deposits of disclosed plants until issuance of the pat-

ent.9 Post-ling deposits in the United States are afforded the

same protection as if they had been led in the original applica-

tion, so long as the deposit is determined to be for a plant that

was specically identied in the original ling.10 Most other

countries, however, require deposits to be completed at the

time of ling, and therefore limit priority claims to applications

that already included the enabling deposits.11 For example, the

Canadian and European patent ofces both require applicants

to complete deposits for their inventions before the ling of an

international Patent Cooperation Treaty (PCT) application, or

before the ling of a national application.12 Thus, applicants

wishing to seek patent protection for their varieties abroad

should plan on completing their biological deposits at least

prior to the ling of a PCT application, if not earlier.

Risks of Over-Disclosure with Biological Deposits

Applicants should also consider the disclosure implications

of their deposit decisions. Once a patent issues, any biological

deposits provided therein are made available to the public.13 In

the United States, the ability to delay the submission of enabling

deposits permits applicants to perfectly tailor their deposited