April 29, 2019

Have a New Plant Variety? This is How You May Protect It

Tamar Morag-Sela, Partner, Head of Life Science & Chemistry Practice
Tamar Morag-Sela

Partner, Head of Life Science & Chemistry Practice

Reinhold Cohn Group

A newly bred plant variety is a proprietary asset in every respect, and it is important that the new variety be protected under Plant Breeders’ Rights Law. A new technology developed during a breeding process and use of breeding products can constitute patentable inventions.

The climate is changing and the world is becoming more crowded than ever. These are facts of life. Today, the Earth is home to over seven billion people, forecasted to reach at least nine billion by 2050. Hence there is a need for sustainable agriculture, the development of new agricultural technologies and the continual breeding of plant varieties with improved properties in being disease resistant, tolerant to extreme environmental pressures and having larger crops, which together ensure a future world with a supply of food that is abundant, harmless, accessible and healthy.

Israel is known as an agricultural powerhouse, and quite a few well-known plant varieties have come from “Holy Land” development, typically arising from environmental exigency. About 15 years ago, for example, Professors Kedar and Rabinovich from the Faculty of Agriculture in Rehovot developed the cherry tomato to satisfy the need for a variety tolerant of the climate in Israel. Varieties for whole wheat flour are another example of Israeli development by  Volcani Center and  others, in response to growing health food trends.

Protecting a New Variety

Agricultural developments in general and breeding plant varieties in particular require considerable investment in knowhow, resources and time. To encourage creativity and ensure that entrepreneurs (the farmer, breeder, tech developer and so on) see returns for their big investment on the one hand and to safeguard the public interest on the other, uniform principles have been adopted around the world on the basis of which every country has set up legal mechanisms granting such entrepreneurs exclusivity to its developed product for a period determined by the law. These mechanisms fall under the umbrella of Intellectual Property, which includes, among others, protection of a new species under the Plant Breeders’ Rights law and protection of technological innovations under the Patents Law.

Plant Breeders’ Rights Law is a legal tool that grants a variety owner a territorial right to prevent another from using it if the variety owner, be it the breeder or a company under which the variety was developed, filed an application to register it in the Plant Breeder’s Rights Gazette and the variety is compliant with the requirements of the Plant Breeder’s Rights Law. To be eligible for registration of a breeding rights, a variety must meet several conditions: it must be new, that is, the variety, the propagating material or its harvested material (for instance, its fruit) is not sold or otherwise transferred in a specific period; it must be stable such that its basic properties are preserved even after repeated propagation, uniform in its basic characteristics, and unique in relation to any prior registered variety. A breeder is entitled to enjoy the right for a set period of 20-25 years, depending on the plant type, during which time the plant cannot be used without permission from the owner of the right, subject to a number of special cases.

Protecting a newly developed technology

When cultivating new varieties, often new technologies arise, such as a new method for treatment of soil or seeds that led to plants with improved properties, new systems and devices, new material and so forth. These developments can be patent-protected as a new technological invention, providing a scope of protection for the new development that is often broader and stronger than protection through Plants Breeders’ Rights.

While the Patent Law in Israel excludes patent protection for new varieties (section 7(2) of the Patent Law states that a patent will not be granted for new plant varieties), when a developed technology allows for a variety ofof species sharing the same improved properties, the patent procedure enables protection over the technology as a whole, including products, plants, propagating material and harvested material, all of which maintain the improved properties.

Can breeding a variety be the seed for a patentable invention?

A patent can be issued for a new invention if the invention is a new process or product and on the condition that the new process and/or product has utility and inventive step, i.e., is not obvious, with respect to processes and/or products known prior to the new development. Like Plant Breeders’ Rights, the patent is a legal document that is territorial with the aim of granting the patent holder the right to prevent another from using the product or process as defined in the patent. To receive a patent, the inventor or the lawful owners of the invention must file an application to register a patent in the territory they are interested in being granted with a patent, and this application is examined according to uniform principles established around the world regarding patent-eligible inventions.

The question of inventive step is particularly complex when the creation of new plant varieties is concerned. While use of classic hybridization methods cannot be patentable inventions, if the process includes, for instance, a unique change from the classic one or uses unique material that produces plant lines with unexpected properties (non-obvious results), then a patent could possibly be issued for the modified process, the unique material, the improved products and their use. Such patent will not be restricted to the specific variety obtained but to plants with the new property. At the same time, it is of course possible to protect the specific varieties obtained by means of Plant Breeders’ Rights. An example of different forms of intellectual property being combined and one very relevant to current discussions is cannabis. Aline with the breeding and registration of cannabis varieties distinctive in, for example, their composition of active components (cannabinoids), patents are granted for the use of cannabis plants that are characterized by these unique properties, for medicinal purposes, as supplements and/or functional foods, among others.

Intellectual property – an asset in every respect

There are many advantages in registering Plant Breeders’ Rights, patents or any other intellectual property since its value as an asset lies in anything that can be traded, licensed for use and even mortgaged. Also, in a competitive world, ownership of Intellectual Property assets lends major advantages over competitors, often preventing others from entering the “arena” monopolized by the rights holder or at least significantly deterring potential competitors. Specifically, Intellectual Property assets are of great weight in start-ups, where such assets often represent 100% of the company’s value in the first years of their establishment. In such cases, Intellectual Property assets may be the primary, if not sole, leverage for investments in the company.

Hence, any legal entity, be it a private individual, an early stage entrepreneur or a large company, that recognizes the need for creativity in order to survive the ever-changing trends in the world must focus on building Intellectual Property-based value and include an Intellectual Property strategy within its overall business plan.

This article is provided for general information only. It is not intended as legal advice or opinion and cannot be relied upon as such. Advice on specific matters may be provided by our group’s attorneys.

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