University Plant Breeding Programs: Key Intellectual Property Protection And Licensing Considerations

Program agenda:

• Role of universities in plant breeding
  • Examples of university success stories
  • New opportunities in plant breeding arising from indoor and precision agriculture
• Intellectual Property Protection in Plants
  • Utility Patents, Plant Patents, PVP, Trademarks, Trade Secrets
  • Compare/Contrast: Utility Patent vs. Plant Patents vs. PVPs
    • Filing strategy considerations
    • Application procedure and timelines
  • Foreign Intellectual Property Protection in Plants
• Anatomy of the plant license
• Review of relevant legal cases in the field
  1. E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’ l, Inc.,534 U.S. 124, 143-46, 122 S.Ct. 593, 605-06, 60 USPQ2d 1865, 1874 (2001)
  2. Bowman v. Monsanto Co., 569 U.S. 278 (2013)
  3. Asgrow Seed Co. v. Winterboer, 513 U.S. 179 (1995)
  4. In re Beineke,690 F.3d 1344, 1352, 103 USPQ2d 1872, 1877 (Fed. Cir. 2012)
  5. Ex parte Hibberd,227 USPQ 443, 447 (Bd. Pat. App. & Int. 1985)
  6. In re Arzberger,112 F. 2d 834, 46 USPQ 32 (CCPA 1940)
  7. Syngenta Seeds, Inc. v. Delta Cotton Co-Operative, Inc., No. 05-1507 (Fed. Cir. July 28, 2006)
  8. Syngenta Seeds, LLC v. Seminis Vegetable Seeds, Inc., 2:19-cv-01986-TLN-CKD, (E.D. Cal. Jan. 10, 2022)
  9. Turfgrass Grp., Inc. v. Ne. La. Turf Farms, LLC, DOCKET NO. 3:10-1354, (W.D. La. Sep. 30, 2014)

Plant breeding is a huge part of the agricultural economy, and for many TTOs it’s huge part of their tech transfer licensing activity that’s not only a source of revenue, but also a source of economic growth for the agricultural economy. In fact, in 2020 alone, universities had a part in contributing upwards of $1.055 trillion to the U.S. gross domestic product coming from the agriculture, food, and related industries. In the same year, 9.7 million full-and part-time jobs were related to the agricultural and food sectors.

It’s a huge industry with plenty of competition between universities and private plant breeding companies trying to stake a claim to a growing market. It is imperative that universities aggressively protect their valuable plant assets via patents, plant variety protection, trademarks, and trade secret protection not only to secure their IP, but also to encourage continued R&D investments and bring new innovations to farmers. Yet there’s little guidance available for universities in terms of the specific intellectual property and licensing issues unique to this complex arena.

That’s why we’ve teamed up with John Sears and Carin Miller from JMIN to provide critical guidance on key IP protection and licensing considerations for new plants and plant varieties.

The presentation will provide detailed advice on the use of utility patents, plant patents, plant variety protection, trademarks, and trade secrets as applied specifically to this unique area of innovation.

During this 90-minute session, we’ll also discuss the process and application procedures for utility patents, plant patents, and plant variety protection in the U.S. and internationally. We’ll review the anatomy of the plant license, particularly in the university context and review relevant case law.

Program Leaders