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Re: [nafex] Patent Rights/Royalties- 3 questions

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
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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