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

	Jim et al:

	UPOV does explicity address the issue of seedlings and sports.  In
Article 14(5) of the 
1991 Act, they state that "Any protected variety may, even under the 1991
Act, be freely used as a source of initial variation and, only if a
resulting variety falls within the narrowly defined concept of essential
derivation, is the authorization of the breeder of the protected variety
required."  Essential derivation is defined in such a way that seedlings
would be excluded from protection, and breeding with the protected variety
would not be prohibited.   Go to  http://www.upov.org/eng/content  and look
under the heading of "Protection under the International Convention".   If I
have interpreted this information correctly, and if the US is a signatory to
this Convention and US laws are in agreement with UPOV laws, then Cornell
cannot restrict use of it's patented varieties for parents in a breeding
program.   However, the law as it applies to licenses may allow this on
licensees, but not other users;  I can't imagine, though, why there would
not be uniform application of the law to all users.


> 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.) 
> //Jim 
> www.cumminsnursery.com