So you want to bring a new plant to market? Part 2

Plant breeders should develop a strategy to protect their intellectual property. Know the differences between types of licensing, trademarks and patents.

New cultivars debuted at California Spring Trials 2013. Photo credit: Heidi Wollaeger, MSU Extension
New cultivars debuted at California Spring Trials 2013. Photo credit: Heidi Wollaeger, MSU Extension

In Part 1 of this article, I discussed some initial steps a plant breeder should take in order to bring a new plant cultivar to the market. The next step in the process is to decide on a strategy to protect your intellectual property in order to receive royalties on your innovative plant. Protecting your intellectual property is valuable because it allows you to recoup the cost of research and development, allows you to brand your material, and can even prevent others from selling the same product for up to 20 years.

As stated in Part 1, one of your initial steps is to hire a plant patent agent who can help you navigate the complex road ahead. First, what is a patent? A patent excludes others from making, using or offering for sale your invention. In the United States, there are two types of patents that you can apply for to protect plants: plant patents and utility patents. In addition to patents, one may apply for a certificate under the related Plant Variety Protection Act. A plant patent seeks to protect a plant that is asexually propagated, such as cultivated sports, mutants or hybrids, but excludes tuber propagated plants. A plant patent is relatively inexpensive compared to its alternative, the utility patent. The utility patent protects the “use of a process or a new or useful improvement.” This type of patent covers unique traits of the plant and phenotypes or the method used to breed the plant.

Lastly, plant variety protection can be sought for sexually reproduced and tuber propagated plants and provides the breeder exclusive marketing rights to the plant. Be aware that these protections differ in cost and the timing of filing before sales or public disclosures begin. For example, in the United States, the owner of a product must apply for a plant or utility patent within one year from the first offer of sale or the first showing of a plant at a trade show, competition, or even on the Internet. In contrast, sales, but not other types of public disclosures, limit the time to file for plant variety protection.

While patents protect the breeder or owner of the plant, the trademark serves to help both the consumer and the plant breeder. A trademark can be a word, logo or symbol in order to brand your plant. The trademark assists the consumer in identifying the origin of the plant and prevents others from passing off their own goods as yours. It can provide the breeder with additional protection beyond a patent and does not expire after 20 years, as is the case with patents.

The symbol ® represents that the trademark is registered with the United States Patent and Trademarks Office (USPTO), while the symbol ™ indicates that you are declaring the word, logo or symbol to be your trademark, but have not yet registered it. Registration with the USPTO has numerous benefits. In either case, you must use the trademark at all times with the respective plant and police the trademark’s use in the marketplace.

Finally, once you secure your intellectual property, licensing is a great way to monetize your intellectual property. There are a few strategies for licensing, such as limited, broad and open licensing. Limited licensing allows you to license your product with some non-competitors. However, this might limit your market penetration and your royalties. Broad licensing licenses your competitors to also sell your product in order to maximize your market penetration, distribution channels, and therefore your profits. Opening licensing allows all growers and retailers to sell your product. One advantage of open licensing is that it will minimize the “knock-offs,” but it makes your product less exclusive. Another option is to only control plug/liner sales, which is similar to broad licensing in that it maximizes your distribution, market penetration and profits.

All of these legal actions can protect your ability to earn royalties. Consider these strategies so that you can be paid!

For more information on getting started, check out “So you want to bring a new plant to market? Part 1” from Michigan State University Extension.

Thank you to Jennifer Carter-Johnson, Associate Professor of Law at Michigan State University, for her review. Thank you to Tim Wood, Spring Meadow Nursery, for the inspiration for this article.

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