Plant Breeders' Rights for New Feedstocks

By Micheline Ayoub and Jeremy Lawson
While patents remain the principal form of intellectual property for protecting technological advancements in Canada, plant breeders' rights can provide an alternative or complementary protection for new plant varieties. Species engineering has begun on heralded, under-researched plant feedstocks such as switchgrass, camelina and jatropha, and protecting the fruits of such research and development labor can be achieved in Canada through a combined strategy.

Criteria for Patents Versus Plant Breeders' Rights
A valid patent will be granted for an invention that is novel, useful and nonobvious. If the invention was disclosed by the applicant more than one year before filing a patent application, then it is considered unpatentable in Canada for lack of novelty.

To qualify for a plant breeders' rights certificate, a plant variety must be new, distinct, uniform and stable. A "new" variety must not have been sold in Canada before the filing of the plant breeders' rights application and must not have been sold abroad for more than four years, or for more than six years in the case of woody plants and their rootstocks.

A "distinct" variety possesses measurably different characteristics from commonly known varieties. For example, a variety could be "distinct" because its seed oil content is higher than any known variety of the same species. Furthermore, a "uniform" variety exhibits predictable variation in its characteristics, and a "stable" variety has characteristics that remain unchanged over successive generations.

Subject Matter of Patents Versus Plant Breeders' Rights
The Canadian Intellectual Property Office currently holds the position that multicellular organisms are not patentable subject matter. It may be possible to patent new and inventive methods of genetic engineering, or individual cells of multicellular organisms, but any claims to a plant itself will be rejected by CIPO. The Plant Breeders' Rights Act allows the exclusive right to a plant variety that is asexually or sexually reproducible. However, plant breeders' rights cannot be obtained for fungi, algae or bacteria.

Duration, Scope of Patents Versus Plant Breeders' Rights
While the term of a patent is 20 years from the date of filing a patent application, the duration of plant breeders' rights is 18 years from the plant breeders' rights certificate issue date.

The scope of a patent is defined by its claims and often allows broad coverage of an invention, such as a plant cell containing a new chimeric gene that is applicable to several plant species. Each plant breeders' rights certificate, however, covers a particular variety belonging to a particular plant species. The plant breeders' rights certificate holder may exclude others from selling the protected variety, producing it for sale and making repeated use of the protected variety as a step to commercially produce another variety.

Plant Protection in the U.S.
In the U.S., breeders' rights can be obtained for sexually reproduced (by seed) or tuber-propagated plants. It's also possible to obtain a so-called "plant patent" for an asexually reproduced plant. The U.S. also allows regular utility patents for plants.

Given the need for improved plant feedstocks in the energy industry and the particularities of the Canadian intellectual property system, neither patents nor plant breeders' rights should be overlooked as valuable means of protection.

Micheline Ayoub is a patent associate in the fields of biotechnology and plant varieties protection at Robic, a Quebec-based intellectual property and business law firm. Reach her at [email protected]. Jeremy Lawson is a patent agent in the fields of chemical and process engineering at Robic. Reach him at [email protected].