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Workshop Navigating Patent Challenges in Plant Breeding: Learning from Recent Cases

The discussions on the different cases facilitated a positive interaction between CIOPORA members and the examiners from the USPTO, creating a valuable learning experience for both parties.

An interesting workshop took place on Tuesday session during the CIOPORA AGM 2023. The activity, organized by the Technical Expert of CIOPORA, Paulo Peralta, was structured in three sessions, with each of them focusing on different recent cases of infringement of plant patents or utility patents. Each session was introduced by an experienced speaker providing a brief overview of their respective cases, followed by a discussion on the broader implications of the cases and potential ways to address issues related to enforcement.

One of the singularities of the event was the attendance of a large delegation from the USPTO comprised of patent examiners and representatives from the legal department, who had the opportunity to interact with CIOPORA members and learn from each of the discussed cases.

James Weatherly from Weatherly IP Solutions presented the first case UC Davis v. California Berry Cultivars (CBC) [16-cv-02477, N.D.Cal. 2017]. The dispute focused on the ownership of intellectual property and tangible rights to patented and unpatented strawberry varieties developed by breeders of CBC, Douglas Shaw and Kirk Larson, who had headed UC Davis's strawberry breeding program before. After assigning their rights in varieties they developed while working for UC Davis to CBC, Shaw and Larson faced allegations of infringing the university’s patents through various activities. These activities included using UC Davis patented plants obtained from a licensed California nursery to breed new strawberry varieties in Spain and importing seeds from these varieties back into the US for propagation. UC Davis sued CBC, asserting unauthorized use of genetic material from protected varieties. The court recognized UC Davis as the owner of tangible property rights in the germplasm, but not on the intellectual property rights based on the Patent Agreement with Shaw and Larson. However, the court found Shaw and Larson in breach of their contract for failing to assign rights and withholding important information regarding the germplasm. CBC was deemed not to be a bona fide purchaser and was held liable for infringement by importing seeds from UC Davis patented plants and using US patented plants beyond the scope of the license.

The key takeaway from this case emphasized the significance of establishing the origin of plant materials involved in breeding activities that are protected by plant patents and determining the source and legal status of plant materials to avoid potential disputes and ensure compliance with intellectual property rights.

The second session was presented by Michelle Bos, an American lawyer specializing in plant intellectual property. The discussion focused on invalidating the public use of an ornamental plant (case In Re WinGen). This is a recent case, which involves a reissue utility patent application for a Calibrachoa variety named ‘Cherry Star’. During the reissue process, the patentee disclosed that the plant was displayed during an event at Home Depot. The examiner rejected several claims made in the patent, but most important alleged prior public use of the invention at the event. Although the plant exhibition was considered a private event, where no plants were sold, the participants were under no obligation of confidentiality. The Court decided that the public use was invalidated by making the plants accessible to the public by fulfilling the ornamental purpose of plant variety during the exhibition. Some key insights can be drawn from this case. It highlights the fact that utility patent applications are evaluated under a different standard compared to plant patent applications. In utility patents, the display of an ornamental plant serves as a significant feature. The importance of maintaining confidentiality to negate public use is also emphasized. Additionally, it is advisable to file patent applications sooner rather than later when there is uncertainty.

During the last session, Dr. Travis Bliss, a partner at the IP law firm Panitch Schwarze, introduced a recent case involving the invalidity decision of Staccato Cherry patent (2:20-CV-00181-SAB). The Canadian government filed a lawsuit against Van Well Nursery, Inc. for infringement of their plant patent. The accusation was that Van Well Nursery produced and sold trees genetically identical to the patented Staccato cherry tree without permission from the Canadian government. The Court ultimately declared the patent invalid, citing that the invention had been offered for sale more than one year prior to the filing date. Van Well Nursery argued that they had purchased the trees a long time ago, and they had publicly displayed and sold them before the critical date, thus triggering the on-sale bar provision of 35 U.S.C. § 102(b) and invalidating the patent. This case highlights the importance of timely patent application, ensuring that it is filed at the appropriate stage of development, and the need for careful management of commercialization activities.

In conclusion, the workshop offered valuable insights into the complexities and implications of patent infringement in the field of plant breeding. The discussions on the different cases facilitated a positive interaction between CIOPORA members and the examiners from the USPTO, creating a valuable learning experience for both parties. Breeders had the opportunity to highlight important considerations in the cases, while the patent examiners gained valuable knowledge from the event. The sessions shed light on key aspects related to plant patents and utility patents, including the significance of confidentiality, optimal timing for patent filing, and the importance of effectively managing commercialization activities. Overall, the workshop equipped plant breeders and IP professionals with valuable lessons to navigate patent challenges and safeguard their innovations in the dynamic realm of plant intellectual property.


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