36 



for which protection is sought. The PPA specifically exempted plant patent appli- 

 cants from the requirement of the enabling written description. A printed publica- 

 tion, which would bar a utility patent application, is not a barrier to a plant patent, 

 on the ground that a printed publication was nonenabling for a plant. The person 

 granted the plant patent is entitled to exclude others from asexually reproducing 

 the plant, selling it, or using the plant that is reproduced. Plant patents may in- 

 volve less attorney preparation and filing time than utility patents and may avoid 

 deposit costs. 



The definition of patentable subject matter is contained in section 161 of Title 35, 

 in which tuber-propagated plants are excluded. The exclusion of tuber-propagated 

 crops was a political rather than a scientific decision and was largely because at 

 that time the potato industry did not support patents for potatoes. The rationale at 

 that time was that for tuber-propagated plants, the propagating and edible portions 

 of the plant are the same. 



PLANT VARIETY PROTECTION 



The PVPA of 1970 provides protection to sexually reproduced varieties that breed 

 true (inbred or true-breeding plant varieties produced from seed). The purpose of 

 this legislation was to extend IPR to sexually reproduced species not addressed in 

 the PPA. Fl hybrids were excluded since trade secrecy affords protection for those 

 varieties and because they usually do not meet the requirement for stability. To 

 secure protection under PVPA, the variety must be distinct, uniform, stable, and 

 named. The holder of the PVP certificate is entitled to prohibit others from selling 

 or offering the variety for sale, importing or exporting the variety, or sexually mul- 

 tiplying the variety for marketing. The exemption to the breeders' right is that the 

 protected variety can be used to develop another variety which is distinct from the 

 protected variety. This concept is critical to germplasm exchange. Secondly, the 

 farmer can save seed to plant the following year's crop. An unusual exemption that 

 is a legal nightmare is one that the farmer, whose primary farming occupation is 

 not seed growing, can sell to other such farmers without any obligation to the owner 

 of the PVP certificate. At present, potatoes are specifically exempted from PVP, 

 again, largely because the potato industry chose to not participate in IPR in 1970. 



UTILITY PATENTS 



Utility patents (or general patents) have only been granted since about 1985 for 

 potatoes. As a result of the 1980 decision of the Supreme Court in Chakrabarty v. 

 Diamond (206 USPQ 193) patents are available for inventions consisting of living 

 material provided that a significant degree of human intervention was involved. For 

 an invention to be patentable, it must be new, industrial applicable, nonobvious, 

 and subject to an enabling disclosure. Although PPA covers sports, this is not true 

 in the utility patents. Mere discovery is not adequate. The purpose of an enabling 

 disclosure requires that the "invention" be described so that a person skilled in the 

 art to which the "invention" relates can reproduce it. For living material, like plant 

 cultivars, it is frequently impossible to precisely reproduce the same material. To 

 deal with this problem, an applicant may deposit a sample of the relevant living 

 material along with the description. These two components, description and deposit, 

 make up the enabling disclosure. However, there is no depository for asexually prop- 

 agated crops so the industry needs to answer this need. The holder of a utility 

 patent is entitled to exclude others from unlicensed reproduction, using, or selling 

 the "invention" throughout the United States. In other words, the utility patent is 

 infringed upon if the patented potato cultivar is used for breeding. 



The decision to obtain patent rights requires planning prior to applying for the 

 utility patent. For example, your rights can be invalidated if more than 1 year 

 passes between public disclosure of the cultivar and the patent application. One 

 should also keep detailed records that should be dated and signed. In addition, tight 

 control should be maintained over the cultivar. It should not be shared with anyone 

 without a valid testing license and any plants of the cultivar should not be sold. 



TRADE SECRETS 



Trade secrets are appropriate primarily for protecting unique breeding methods 

 or laboratory techniques that are never exposed to the public. Parental inbreds 

 which are cross-pollinated to produce Fl hybrid cultivars are protected as trade se- 

 crets. A trade secret can be protected over a long period of time. As long as there is 

 no public disclosure of the trade secret, it can be enforced. This form of protection, 

 is usually not an option in considering an asexually propagated cultivar or inbred 

 line of a plant variety where true-to-type "seed" is to be sold to the general public. 



