[nafex] Patent Rights/Royalties- 3 questions
jmc1 at epix.net
Sat Jan 6 12:36:12 EST 2001
There may be some confusion between patent and license.
US patent law and the UPOV regulations, as I understand them, do not address
the issue of seedlings and sports of protected cultivars. For example, the
ENZA folks patent Pacific Rose, which simply affirms their ownership of that
clone in the US. ENZA may then (1) license Pacific Rose to 1 or 2 or 3 select
nurseries with permission to sell trees made under license to all comers; or
(2) give the right to propagate to all comers (fat chance!!); (3) retain
sole right to propagate and either sell or not sell trees; of (4) have the
trees propagated under contract and then "rented" to select growers, while
retaining ownership of the plants. Ownership and control are the central
thrust of a patent.
Licensing has to do with what the owner does with the patented plant. We've had
some vigorous discussions at Cornell about the seedling and sport clause that
is in the licenses for the Geneva rootstocks. (A number of other universities
and other parties have similar contract entries.) In effect, the licensee
agrees that any seedling or sport from a plant covered by the license belongs
to the owner of the primary patent. Therefore, if, e.g., Joe Blow crosses
Geneva 16 with Budagovsky 118, produces 1 or 100 or 10,000 seedlings, and
selects from these seedling #1132, according to the license contract this
selection belongs to Cornell!!!
Now it begins to get really fuzzy: The original license contract is between
the patent owner and the nursery-licensee. The nursery, though, does not
retain physical or other control over the plant propagated and sold, and the
buyer has not made a committment not to use his accession as a parent nor to
turn over any sport he finds. It therefore seems to me that the whole point is
moot unless an arrangement, such as that used by Henry Franklin in Australia,
is made between owner and grower.
More fuzziness? Let's add GMOs to the pot. Take 'Fortune' apple, patented by
Cornell. Now Cornell slips in the atticin gene -- owned by LSU and licensed
to Cornell. The new blight-tolerant Fortune is patented jointly by Cornell and
LSU. Now the New Zealand team throws in their slow-ripening gene; new patent
to Cornell, LSU and NZ. Along comes Illinois with a Bt gene --On and on and on
Wouldn't it be great to be a lawyer!!!
(Well, actually, at $100,000 a pop, I don't think we're going to see too much
genetic engineering in our apples.)
Bell, Richard wrote:
> This is a response to an old posting. I hope you can pick up the thread.
> In response to Dale Burkholder's message:
> > Jim wrote:
> > In any case, in the licenses being granted on many recently patented
> > varieties, a clause is included to the effect that seedlings and sports do
> > belong to the patent holder.
> I would be interested in knowing examples of varieties which are in this
> restricted category.
> I believe US law allows use of patented material in breeding, and does not
> restrict ownership of mutants to the developer of the original clone.
> Canadian Planter Breeder's Rights does not prohibit use of their germplasm
> in breeding. Use of ENZA varieties (from New Zealand) for breeding may be
> prohibited without some licensing and royalty arrangment. UPOV
> (International Union for Plant Variety Protection), of which the US, Canada,
> and most Western European countries are members, states that use of
> protected asexually propagated varieties for breeding is allowed. Sports
> and genetically transformed clones of protected varieties cannot be
> independently patented or used commercially without the permission of the
> owner of the original patent, if that patent is still valid. Use for
> research is not prohibited.
> Dale wrote:
> > My question:
> > Does this only apply to the F1 seedlings, and later generations are
> > exempt?
> > If I use these patented cultivars early in a breeding program (my latest
> > get-rich-quick scheme <g>) crossed later with unpatented stuff, am I safe?
> If use in breeding is prohibited, then all generations would be affected for
> the life of the patent. The patent would prohibit the development of the
> first generation hybrids, and thus any subsequent generations would also be
> > Related question:
> > How about the availability of those unnamed varieties from the university
> > experiment stations? I know Fackler sells some PRI stuff & Jim has a few
> > Geneva varieties, but all the others we hear about occasionally, that
> > weren't "good enough" to be released and named? This is NAFEX, we need
> > apples the general public doesn't want.
> The developer has the right to determine the distribution of these unnamed
> selections. They would want to prevent someone from independently patenting
> a selection they developed. In addition, some testing agreements for
> selections not yet released prohibit use for breeding.
> Since patenting is becoming more common, as opposed to unrestricted release,
> they don't want to pay for patenting something that does not have the
> potential for large scale commercial production.
> If the selection is "good enough" for NAFEX and small scale growers and
> home orchardists, then maybe they should be released as cultivars. The
> problem is how to make that determination, given the usual limitations on
> the number of testing locations. Since climatic adaptation may determine
> how a particular selection performs in a given location, it is possible
> that a selection that does not look good enough at the breeder's location
> would be promising in a different climate; hence, the need for diverse
> testing locations and consistent evaluation protocols.
> Richard Bell
> Research Horticulturist
> USDA, ARS
> Appalachian Fruit Research Station
> 45 Wiltshire Road
> Kearneysville, WV 25430-9425
> Tel: 1-304-725-3451 Ext. 353
> Fax: 1-304-728-2340
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