Home > Topics > The IP Toolbox > Plant Breeders’ Rights: An Introduction > Editor's Summary, Implications and Best Practices

There are a number of types of statutory IP protection for plants: utility patents, plant variety protections (PVPs), plant patents, trade secrets, geographic indications, and trademarks. These chapters provide an overview of the strengths and weaknesses of each type of IP protection. In some sense, the stronger types of IP protection are also those that have the most stringent requirements for application. In order to capture the greatest value from its plant-related intellectual property assets, an organization should be aware of all of its options for IP protection options and use them to its greatest advantage. IP protection should be used in accordance with the needs of the inventor, the nature of the invention, and/or the goals and mission of the organization.

Utility patents, plant variety protections, and trade secrets are the most important methods of protecting intellectual property related to plants. Elite plant varieties may also be protected by trademarks and geographical indications. There are several international treaties that cover these forms of protection. The various forms of IP protection for plants can be used alone or in combination with each other.

Utility patents provide the most extensive IP protection for plant-related inventions. In the U.S., utility patents exclude others from making, using, offering to sell, selling, or importing the patented invention into the U.S. The requirements for obtaining a utility patent are relatively stringent: the invention must be “new,” “useful,” and “non-obvious.” There is no such thing as an “international patent,” so an inventor must file for a patent in each country in which he or she seeks protection. Patent application and prosecution procedures differ from country to country. However, the Patent Cooperation Treaty (PCT) has made it much easier to apply for patents in different jurisdictions. Under the PCT, an inventor fills out a single patent application that can, after an examination period, be submitted to patent offices in any of the PCT member countries.

In the U.S., plant patents can also be used to protect plant-based inventions. A U.S. plant patent is a patent that is covered by the same statute that covers utility patents. Plant patents offer only a narrow scope of IP protection, and they can only be used to protect asexually propagated plants (excluding tubers).

Not all countries grant utility patents for inventions in agricultural biotechnology. In those countries that do not, plant variety protections (PVPs), also known as “plant breeders’ rights,” can be used to protect sexually reproduced plants, tubers, and harvested plant parts. Many countries have legislated and implemented national PVP systems that are based on the guidelines established by the International Convention for the Protection of New Varieties of Plants (UPOV); in the U.S., UPOV guidelines have been incorporated into the Plant Variety Protection Act (PVPA).

According to UPOV, a plant variety can only receive protection if it meets four basic criteria:

1. The variety is distinct: that is, it is clearly distinguishable from any other variety whose existence is a matter of common knowledge at the time of the application filing;
2. The variety is uniform: that is, it reproduces true to form;
3. The variety is stable: that is, it reproduces true to form across generations;
4. The variety is new: that is, it has not been commercialized prior to the application filing.

However, there are several important limitations to the rights of a plant variety’s owner under UPOV (and, by extension, PVPA):

1. Breeders’ rights. Breeders can use the variety for breeding and experimental purposes.
2. Farmers’ privileges. Farmers are permitted to retain sufficient seed for replanting the variety on their own farms in the following season.

Obviously, PVPA does not provide as much IP protection for plant material as does a patent. PVPA ensures that certain users can gain access to otherwise protected plant materials.

Trade secret protection is available for plants under certain circumstances. A trade secret prevents the unauthorized use and disclosure of secret information. Trade secret protection, unlike patent protection, requires no formal application, and lasts indefinitely—so long as the information is kept secret! Trade secrets do not provide any protection against someone who reverse-engineers or independently discovers the information in question. A classic example of a plant-based trade secret is the genetic information contained in the seeds of the parental inbred lines that are used to produce proprietary hybrid varieties.

Trademarks and geographical indications may also be used to protect plant material, but they are generally less useful than trade secrets, utility patents, and plant patents. Geographical indications are words or phrases that indicate the region from which the plant material originates; they are valuable because they suggest to consumers that the plant material has beneficial traits that are commonly associated with plant material from that region. Trademarks can be particularly valuable if the variety has substantial market potential. Trademarks and geographical indications are more valuable than ever because agricultural commodities are now globally exported and marketed.

Strategies for IP-protecting plants should be tiered and integrated. Depending on the circumstances, it is possible for a single plant to be simultaneously protected by several different methods:

1. A utility patent (for a specific genetic modification);
2. A PVP (for a crop variety);
3. A trade secret (for an inbred parental line); and
4. A trademark (if the plant or its products are easily recognizable by consumers).

Key Implications and Best Practices

Given that IP management is heavily context specific, these Key Implications and Best Practices are intended as starting points to be adapted to specific needs and circumstances.

For Government Policymakers

• National provisions for IP protection of plant varieties will encourage investment in the development of crops that are essential for food security, economic development, and export market outreach.
• It may be prudent for countries to join UPOV and institute UPOV-based plant variety protection (PVP) systems. Such systems encourage domestic innovation and encourage the transfer of foreign proprietary crop varieties, thereby leading to increased domestic R&D and plant breeding efforts.
• There are advantages to being a member of the UPOV Convention: for example, member countries benefit from standardized regulations. Also, UPOV (like TRIPS) allows for flexibility in implementation.
• Consider the possibility of legislating patent protection for plants.

For Senior Management (university president, R&D manager, etc)

• Plant variety protection systems (PVPs) are an important tool for protecting plant varieties. PVPs will secure and protect the crop innovations that breeders typically spend years developing. Hence, PVPs should be a first-line tool for IP protection, and should be written into an institution’s IP policy.
• PVP rights can be licensed in such a way that both commercial and humanitarian objectives can be met simultaneously.
• Plant-based intellectual property can be simultaneously protected by patents, trademarks, and PVPs. The IP rights and protections conferred by each are different and complementary.

For Scientists

• Good data management (including the keeping of accurate records and notebooks) is essential. Best practices for scientific recordkeeping are identical to those for IP management. Work with your institution’s Technology Transfer Office in order to establish a top-notch recordkeeping system.
• Understand the various types of IP protection that are available to you (for plant-based materials, these are patents, trade secrets and plant variety protection). Know how each of these types of IP protection works and how you should record, organize, and manage data and information in order to use it.

For Technology Transfer Officers

• Trade secret protection may be the most appropriate IP protection in certain circumstances (for example, inbred parental lines).
• Instruct scientists and other R&D staff (such as plant breeders and technicians) about IP protection. The more aware they are, the more likely they are to capture and utilize the organization’s IP assets.