North American Fruit Explorers mailing list at ibiblio

[Philip Stewart <philstewart24@yahoo.com>]

Disclaimer: I'm not a lawyer, and I've never
personally patented anything. I do however have many
years of working in fruit breeding programs, and have
been involved in the patenting of a number of
varieties. 

Anyway, my thoughts on your questions:

1) No. See plant patent number 9,256. This was a wild
tree retained for shade on land converted to pasture.
I think this is a little marginal, but it was issued a
patent. I think the main reason the wild/cultivated
distinction is important is to demonstrate that the
plant in question exists because of some intervention
on the part of the inventor. There are many other
examples of chance seedlings not intentionally
planted, growing in yards, etc. Just where the line
falls depends on your patent inspector, I suspect.

2) In general, yes, although the limits can be blurred
sometimes (see above). The main requirements for a
chance seedling are that a) the plant be discovered in
a "cultivated area", b) the plant must have definite
distinguishing features which caused recognition and
appreciation of the discovered plant, and c) it must
be successful propagated asexually. Also, given some
current interpretation of patent law, you might have
problems if the plant was demonstrated to be a
seedling of a plant under patent at the time the
seedling originated.

3.) I'm not sure how much proof is really needed, but
ideally the original plant would be maintained in its
original location, or you could at least have photos
of it. 

4.) If no agreements were signed to make it explicit
that the distribution of the material was
non-commercial and for testing purposes only, then I
think that ship has sailed. I think you would be very
hard pressed to get a patent issued. Even if you could
get signed agreements and statements, that's a lot of
people and a lot of time floating around with no
agreement.

5.) If the patent office determines that it has been
"in commerce" sufficiently that you can't patent it,
no one else can either, and it is effectively in the
public domain.

One alternate means of retaining some control of the
variety if you are unable to patent it is through a
trademark on the name (if it's already circulating
under a name, it may not be possible to patent that
name, however). That way you could promote and
distribute it under the chosen name, and while others
could propagate it and sell it, they would have to
call it some thing else.  Basically, while they could
still profit from your work developing the cultivar,
they couldn't profit from your efforts in promoting
it. Copyrights require periodic renewal and fees,
however, unlike patents they never expire.

Good luck!

--Phil

> Message: 1
> Date: Sat, 12 Aug 2006 16:30:00 +0000
> From: "tanis cuff" <tanistanis@hotmail.com>
> Subject: [NAFEX] patenting questions
> To: nafex@lists.ibiblio.org
> Message-ID:
> <BAY105-F2528CB38E679F5CEAC2634CF480@phx.gbl>
> Content-Type: text/plain; format=flowed
> 
> After seeking info til I feel like I'm going in
> circles, I don't find clear 
> answers to the following.  Can anyone suggest good
> info sources, or offer 
> case histories?  Please/thanks.
> 
> 
> 1-- Can "chance seedlings" be patented only if they
> grew in deliberately 
> planted nursery row, from seeds intended as starts
> for nursery stock?
> 
> 2-- Chance seedlings found growing wild can NOT be
> patented?
> 
> 3-- How would one prove that the chance seedling was
> wild or 
> nursery-germinated?
> 
> 4-- If one wishes to patent a chance seedling, but
> scions have been given to 
> other amateur fruit-growers (perhaps a dozen
> growers) for 10 or 20 years, 
> can the "back tracking" be done to get
> non-distribution agreements from 
> these growers?  [I don't mean 'can' as in PRACTICAL,
> but 'can' as in LEGAL.]
> 
> 5-- If #4 can't be legally binding, &/or if #2 is
> true, how does one proceed 
> to make this chance seedling as public as possible
> so that no one can patent 
> it, so the fruit can be kept in the public domain?
> 
> 
> 
> 
> ------------------------------

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