A recent IP dispute in Washington state is instructive to anyone wanting to improve their strategic view of IP matters. The case involves a plant patent for a commercially important varietal of cherries and shows the need to find the right advisors for your company.
Background
The Canadian government has been in a legal battle against a U.S. cherry farmer over the patented Staccato cherry variety, developed by Agriculture and Agri-Food Canada (AAFC) in Summerland, B.C. The dispute centers on allegations that the farmer falsely marketed Staccato cherries as his own patented “Glory” cherries. In this long running dispute a U.S. court invalidated the patent, the farm waived its right to a jury trail, and other activities. Recently, the court reinstated the patent immeasurably strengthening AAFC’s case.
The Staccato™ cherry is notable for its late maturity of one month later than Bing cherries, giving growers a competitive advantage. Since, the ability to sell fruit for even a week longer at the end of the season makes a difference. The cherry tree was originally crossbred in 1982. Decades later after further specimens were monitored the distinctive characteristics were confirmed. So, AAFC made some sales through Summerland Varieties Corp, and filed for a U.S. plant patent. Infringement and validity of the patent were in dispute.
We have three observations on the case.
- A plant patent is a patent in name only
- Prior sales and disclosures matter
- Get the right advisors
A plant patent is a distinct IP right
Know the IP rights that apply to your business and be mindful that these may be different than copyright, trademark, trade secrets, and patents.
All the reporting on this case fails to note the patent is a “plant patent”. Like a “design patent” this is a patent in name only, but it is an assertable IP right over a creation, so the abbreviated term is suitable.
Plant breeders’ rights or a plant patent are the rights to commercially use a new variety of a plant. In Canada we call these IP rights Plant Breeder’s Rights (Plant Breeders’ Rights Act, SC 1990, c 20). There are different requirements including novel, distinct, uniform, and stable. They last 20 to 25 years. Plant patents have a distinct requirement the plants reproduce asexually.
Few applicants use this IP right. The U.S. introduced the Plant Patent Act in 1930 and granted about 32,000 plant patents since then and about 1,000 last year. Last year the USPTO issued 350,000 utility patents and about 10M since 1931.
There are two alternatives to a plant patent. One, a Certificate of Protection from the U.S. Department of Agriculture under the Plant Variety Protection Act of 1970 (PVPA). This form of IP provides the breeder with protection for sexually-reproducing plants. Two, a utility patent.
Like a US utility patent or Canadian patent, you have one (1) year from disclosure or sale to file a U.S. plant patent application.
Novelty and records
A company with good IP practices has good records of key events.
Recall in this case the judge invalidated the plant patent. This was based on a list of prior sales. Specifically, a spreadsheet that begun with six (6) shipments of fruit. These sales happened more than a year before AAFC applied for U.S. Plant Patent No. 20,551. As it turns out, however, those prior sales were not of Staccato cherries but of other varietals and the rest of the records shows the plant patent application was novel.
How you maintain records in your business is your prerogative. In this case note imprecise summary records were nearly fatal to the IP rights. Generally, it is better to keep detailed records and use software to aggregate these details into human readable totals. That way you can see the orchard and the trees.
Having good records of disclosures and sales will nearly always help you refute any allegation your IP right is invalid.
Get the right advisors
This is a case where having the right advisors makes a difference. AAFC benefited from having someone who knew how to write and prosecute a plant patent application. This is a specialized skill we don’t possess, and we won’t take you plant patent case.
AAFC also benefit from having the right lawyers. At trial your representative and representations matter. Ideally you want to go with someone that knows the court, the rules of court, and the relevant IP law. Failing that, you go with a legal team that knows the court and the rules of the court and can learn the IP law. In this case the farmer waived a constitutional right to a jury trial making it much easier for AAFC to win at a bench trial.
Plant patent cases like this don’t come along all that often making it unlikely to find a lawyer that has tried the exact same kind of case before. So you need to broaden your requirements.
When shopping for a patent agent the same mindset applies. You can’t require someone that has patented the same type of widget or service before. If they have they may be conflicted out and unable to engage with you. Also, if you want prior experience with your invention you can question you have an invention.
Conclusion
We hope this post clarifies some aspects of the case missing from reporting on the matter. Also, consider how reading about other IP rights can improve the IP practices at your company. Now, we can’t help you with your plant rights, but we can help you with other IP rights and your IP management practices. Please contact us at [email protected].