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The Plant Patent Act, enacted in 1930, was the first of its kind worldwide, Karen Hauda, attorney and advisor for the U.S. Patent and Trademark Office, explained during a plant patent conference held recently at Pullman, Washington.

The act establishes a process for the breeder or discoverer to patent a single plant and its clones. Plants found in an uncultivated state are excluded from patent rights.

The concept behind plant patent laws is to encourage the development of novel varieties in exchange for public disclosure of the technology, Hauda said. Plant patent laws apply to reproducing, selling, or using the plant or any of its parts (such as fruit) in the United States or importing the plant or its parts. Patents are effective for 20 years from the filing date.

“There is no such thing as a worldwide patent,” Hauda said. “U.S. patents provide protection only within the United States.”

The patent holder is responsible for enforcing the right and stopping others from infringing on the patent once it is issued, she said. The government doesn’t enforce the patent but can resolve patent disputes through the federal court system or the International Trade Commission.

Utility patent

Utility patents cover technology and make it possible to protect a class of varieties with a novel trait, plant parts, and methods of producing or using plant varieties, Hauda explained. Utility patent claims might cover a method of traditional or molecular breeding, methods of tissue or cell culture, novel plant transformation methods, and more.

For example, if a breeder developed a blue-fleshed apple, the new cultivar could be patented as well as the technology developed in making the blue-flesh variety by seeking a utility patent.

“Utility patents are broader than one variety and can be used to patent broader breeding programs,” Dr. Mike Ward, partner in the San Francisco, California-based Morrison and Foerster law firm, explained during the conference. “With utility patents, no one else can use the variety or technology, even in research, without being licensed by the patent holder.”

Trademarked name

New patented varieties need a name by which they will be known even after the patent expires. However, the varietal name in the plant patent has no exclusive rights, said Rosemary Tarlton, attorney with the Morrison and Foerster firm.

Trademarks allow those involved with a patented product to develop a brand for a new variety and exclude others using the trademarked name. For example, Pink Lady is the trademarked name for Cripps Pink cultivar. Only those growers and shippers participating in the Pink Lady America program can use the Pink Lady name and flowing heart logo.

Jazz is another example. When the patent expires for the Jazz variety, competitors will be limited to selling the apple as Sci Fresh, the cultivar name, while those licensed to use the trademark will sell it as Jazz.

To maintain trademark rights, the holder must make sure the trademark is used correctly and not as a generic description.

“You have to be sure that wholesalers, distributors, retailers, licensees, and downstream sellers are required by contract to prominently display the brand to consumers and purchasers,” Tarlton said. “You cannot allow any unauthorized use to continue.”

Enforcement of patent and trademarked names is one of the challenges that face small tree fruit nurseries. Most nurseries in the United States are small, closely integrated companies, said Willow Drive Nursery’s Neal Manly of Ephrata, Washington. “By and large, we’re all struggling with patent and trademark issues.

“It’s hard for small companies to keep track of all the data that’s out there and enforce how the variety and trademarked names are used. It’s customary and accepted in the industry to just use the variety or trademarked name, and not list the brand name and patented cultivar name.”

Manly, who attended the intellectual property conference, said he knows of trademark registrations that were thrown out because the trademarked name was not properly protected or maintained. Policing must be done abroad if the patent and trademark are registered in foreign countries.

He believes that managed variety programs will help enforce patent and trademark issues because plantings are carefully monitored and controlled and marketers running branded promotion programs will pay attention to the use of brand names.