The public sector has a long and successful history of developing enhanced germplasm and finished cultivars that are transferred through public release. For several reasons, such as maintaining genetic integrity, public release may not now be the most appropriate mechanism (Shelton and Tracy, 2017). IP protection of plants is involved and complex (Batur and Dedeurwaerdere, 2014; Clark, 2011). The International Society for Horticultural Science held two symposia on the topic in 2014 and 2018 (Hale et al., 2014). The American Society for Horticultural Science also has held many workshops on the topic. There is still quite a bit of confusion on when and how to protect new plant cultivars (Pardey et al., 2013). In addition, trade secrets and trademarks can also be used to protect new plant cultivars. This article is a practical tool to help research institutions and scientists decide when to consider releasing a germplasm or cultivar, which factors to consider, who should be involved, and whether IP protection—and what type of protection—is appropriate.
Unlike other scientific areas, in the United States there are three distinct mechanisms to protect plants themselves—namely, utility patents, plant patents, and plant variety protection certificates. Each of these mechanisms offers different criteria for protection and covers different types of plants. Cultivars can be protected by a Plant Variety Protection Certificate [PVPC (Chen, 2005)] or a plant patent [PP (Fowler, 2000)]. Asexually propagated plants are covered by plant patents, but sexually propagated crops are covered by PVPCs. An example of a cultivar protected by a PVPC is Capsicum annum L. ‘Black Pearl’ pepper (Stommel and Griesbach, 2005); an example of a cultivar protected with a PP is Rubus subg. Rubus Watson ‘Onyx’ (Finn et al., 2011).
Traits, genes, plant parts, and methods of producing or using man-made plant cultivars could be protected through a utility patent. Utility patents can protect both sexually and asexually reproducing plants. An example of a cultivar protected with a utility patent is Capsicum annum L. ‘Medusa’. The utility patent (US 7,087,819) covers all nonpungent and ornamental pepper plants that have all the morphologic and physiologic characteristics of Capsicum annuum L. ‘96P611’. Yet, at times, more than one type of IP protection could be afforded to a single plant species. For example, in addition to utility patent protection, Capsicum annum L. ‘Medusa’ is also protected with a PVPC (200000140). It is important to note that some mechanisms are more permissive than others. A summary of these three types of protection and their exceptions are presented in Table 1.
Intellectual property protection mechanisms for plants. See text for examples of each type of protection.
Two distinct government agencies are involved in intellectual property in the plant kingdom. Plant Variety Protection applications are examined by the Plant Variety Protection Office (PVPO), Agricultural Marketing Service, U.S. Department of Agriculture, under the authority of the Plant Variety Protection Act of 1970, codified in 7 U.S. Code of Laws (U.S.C.) §2321 et seq. (U.S. Department of Agriculture, 2013). Plant patent applications are examined at the U.S. Patent and Trademark Office (USPTO), an agency of the Department of Commerce, under the authority of the Plant Patent Act of 1930, later codified in 35 U.S.C. §161–164 (U.S. Patent and Trademark Office, 2018). Utility Patent applications are examined at the USPTO under the authority found in Art. 1, §8, cl.8 of the U.S. Constitution and later codified in 35 U.S.C. (U.S. Patent and Trademark Office, 2000).
In addition to these mechanisms, some aspects of plants, such as breeding methods, could be protected as a trade secret, and plant names could be protected under trademark law (Nirwan, 2017). Unlike the three previously mentioned IP protection mechanisms, trade secrets are not time limited. For example, two unique parents, one plant with small purple flowers and the other with large red flowers, when crossed together can result in novel and uniform progeny (i.e., plants with large blue flowers). Progeny of the large blue-flowered plants are not uniform. So, the cross results in plants with large red flowers, small purple flowers, small red flowers, large purple flowers, and so on. In this instance, the original parent plants that produce the desirable progeny can be kept as a trade secret. No one can create the novel plants with large blue flowers without knowing the genetic identity of the parents.
Some institutions may also choose to protect the plant name by registering the name as a trademark, such as Pink Lady® apple, Wave® petunia, Blue Skies® lilac, and Encore® azalea. In many instances, the trademarked plant may also have a conventional cultivar name; for example, Blue Skies® lilac is Syringa vulgaris L. ‘Monroe’. It can also be a little more complex. Apples sold as Pink Lady® can be either Malus domestica L. Borkh ‘Cripps Pink’, ‘Rosy Glow’, or ‘Lady in Red’. Two of the cultivars (‘Cripps Pink’, PP7880; and ‘Lady in Red’, PP18787) are also protected through PPs (Luby and Bedford, 2015).
Although any one or combination of PVPC, PP, utility patent, or trade secret can be used to afford plants IP protection, many public institutions, be they governmental or academic entities, may choose to release their new plant cultivars and novel germplasms publicly without IP protection. What follows describes the plant release process used by the U.S. Department of Agriculture’s ARS (Plowman, 1993). Although the point of departure is ARS’s plant release procedures, the aim is to make the procedures generic so they could also encompass some of the procedures used by our university partners.
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