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Plant Patents – How the Cannabis industry may revive an archaic intellectual property instrument

Plant patents are an overlooked, even archaic area of patent law.


Since the green revolution of the 1970s, and the ensuing advances in genomics and genetic engineering, which the US Supreme Court recognized as patent eligible human ingenuity under 35 USC § 101 (see for example Diamond v. Chakrabarty,447 U.S. 303 (1980)), the push has been in seeking utility protection for genetically engineered organisms over plant patents per se.


However, 35 U.S.C. § 161 recognizes a patentable interest altogether separate from utility concerns, one more akin to the natural law of succession in lieu of human tinkering – one therefore more palatable to human sensibilities – that is, plant patents.


35 U.S.C. § 161 recognizes a proprietary interest in a novel, non-tuberous, asexually reproducible plant that is discovered in a cultivated area.


This applies particularly to new cultivars, or selectively bred plants, not genetically engineered organisms (although, of course, selective breeding to establish novel expressions of a phenotype is considerable as a type of genetic engineering, as Gregor Mendel well established, but one based on the natural laws of progeny and succession rather than genetic manipulation with vectors and artificial syncretism).


Desuetude, though, plant patent protection is almost forgotten. For example, in the 21st Century, in the world’s most advanced patent office, there’s no way to file a plant patent application electronically (you have to mail them in). Of the over 8,000 patent examiners employed at the USPTO, only 2 are assigned to examine plant patents.


But consider the reality – Cannabis is one of the most selectively bred plants on the planet. It is also one of the most profitable. The hybridization of indica and sativa in the 1970s and 1980s emerged untold varieties of “kind bud”. These cultivars are stabilized, asexually reproducible, and readily discoverable in cultivated areas – areas now legally protected in progressive states like Colorado. Even cultivars with varying phenotypes (s.a. Jack Herer) are stable enough to be recognizable as a unique strain.


If enforceable, then, plant patents represent ideally for protecting Cannabis strains. There is probably no better intellectual property instrument available. A plant patent protects every part of the plant, at each stage of development: seeds, roots, stems, pulp, as well as flowers and fruit. The only question is legality and, by extension, enforceability.

Presently, proprietary interests in Cannabis are typically preserved by breeders by restricting the commercial flow of seeds. Most sales of plants for cultivation are consummated with cuttings (a.k.a. “clones”) to maintain sex (female plants are frequently preferred, although healthy males assist in propagating preferred characteristics; thus controlling seeds controls the pollen and, therefore, the ability to not just produce seed, but to establish selectively-bred characteristics).


Thus a plant patent, enforceable for 20 years from the filing date (much like a utility patent), is ideal – seeds, plants, as well as byproducts and harvested materials are all protectable enabling licensing and safeguarding against infringement. No need to sequester seed stock, each seed would be protected under U.S. federal law – no import, sale, or production in the U.S. without appropriate licensing.


Use of plant patents for Cannabis cultivars in the present day is all the more important for a number of additional reasons. First, large corporate interests are already circling the Cannabis space. Federal legalization will result in a shakeup of the market as these powerful interests seek market dominance. Plant patents could keep these interests at bay while protecting value of established grows and proprietary, unique stock – medical stock as well as intoxicating varieties. Second, the USPTO has in fact already issued a plant patent, in 2016, for an intoxicating strain of Ecuadorian Sativa (US PP27,475), suggesting the USPTO is ready to consider Cannabis cultivars of all varieties as protectable under federal law.


The only question remaining, then, is whether or not an issued plant patent will be enforceable in the federal circuit.


Recent trends suggest that may be the case. On December 20, 2018, the Farm Bill legalized the commercial production of hemp. While not an intoxicating variety, hemp (C. sativa) was nonetheless a Schedule I controlled substance. Not anymore.


And presently the 10th Circuit is ruling on patent infringement suits regarding Cannabis products without denying standing for illegal subject matter. (See for example United Cannabis Corp. v. Pure Hemp Collective, Inc.,2019 WL 1651846 (D. Colo. Apr. 17, 2019).(For an example in the converse, consider the difficulties in attaining an enforceable patent for a novel method of making crack cocaine.)


It took the USPTO six years to issue the patent for Ecuadorian Sativa (US PP27,475). Right now plant patent filings for Cannabis cultivars are on the rise. When these are ultimately allowed and issued, federal law may already have changed. Like much in law, resolution of a controversy over plant patent rights is likely to establish the law in the near future. But the move appears to be underway already. There’s just too much at stake.


In 2017, according to the Marijuana Policy Group, 340.7 metric tons of Cannabis were produced in Colorado alone, consisting of 997,805 plants, and a total value of over $1.5 Billion. (See https://www.colorado.gov/pacific/sites/default/files/MED%20Demand%20and%20Market%20%20Study%20%20082018.pdf.)


Plant patents are indubitably the best way to protect this value and avoid market adulteration by corporate interests jockeying in an emerging legal world.

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