Plant Patent 101 for Cannabis and Hemp enterprises

Plant Patent 101 for Cannabis and Hemp enterprises

Charlotte’s Web Holdings, Inc. (CWB Holdings) recently became the first hemp cultivator to secure a plant patent.  The patent is for “a new and distinct hemp cultivar designated as ‘CW2A,’” which is capable of producing up to 6.24 percent CBD and only 0.27 percent THC.

What Is a Plant Patent?

A plant patent is an intellectual property right that protects a distinct and new variety of plant. It allows the patent owner to exclude others from asexually reproducing the plant, and from using, offering for sale, or selling the reproduced plant, or any of its parts. The term “asexual reproduction” refers to the propagation of a plant without the use of fertilized seeds to assure an exact genetic copy of the plant being reproduced. 

Patent rights for plants are governed by Title 35 United States Code, Section 161. It provides:

Whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, may obtain a patent therefor, subject to the conditions and requirements of this title.

As outlined by the U.S. Patent and Trademark Office (USPTO), the following requirements must be satisfied to achieve patentability:

• That the plant was invented or discovered in a cultivated state, and asexually reproduced.
• That the plant is not a plant which is excluded by statute, where the part of the plant used for asexual reproduction is not a tuber food part, as with potato or Jerusalem artichoke;
• That the inventor named for a plant patent application must be the person who actually invented the claimed plant, i.e., discovered or developed and identified or isolated, and asexually reproduced the plant;
• That the plant has not been patented, in public use, on sale, or otherwise available to the public prior to the effective filing date of the patent application with certain exceptions;
• That the plant has not been described in a U.S. patent or published patent application with certain exceptions;
• That the plant be shown to differ from known, related plants by at least one distinguishing characteristic, which is more than a difference caused by growing conditions or fertility levels, etc.; and
• That the invention would not have been obvious to one having ordinary skill in the art as of the effective filing date of the claimed plant invention.

What Rights Does a Plant Patent Convey?

A plant patent precludes others from asexually reproducing, selling, offering for sale, or using the patented plant or any of its parts in the United States or importing them into the United States. A plant patent is regarded as limited to one plant, or genome. The term of a plant patent is 20 years from the filing date of the patent application. As with utility patents, upon expiration of the patent, the subject matter of the patent enters the public domain.

How Do You Obtain a Plant Patent?

The USPTO emphasizes that prior to pursuing a patent, applicants should be thoroughly familiar with the characteristics of the plant, and must assure that the plant is stable. As described by the USPTO, invention for purposes of a plant patent involves a unique two-step process:

• The first step is the discovery step which involves the identification of a novel plant. This step could be performed in any cultivated area. It could involve the identification or recognition of an off­type plant in a monoculture of a known variety or the identification of a desirable mutant which was either spontaneous or induced. Or, it could result from the identification or recognition of an outstanding individual within the progeny of a cross made in a planned breeding program.
• The second step, which consists of asexual reproduction, tests the stability of the claimed plant to assure that the plant’s unique characteristics are not due to disease, infection, or exposure to agents which cause a change in the plant’s appearance which is transitory and not due to a change in the genotype of the plant.

In many ways, the process for preparing and filing a plant patent application is similar to that of a utility patent. The specification must contain as full and complete a botanical description as reasonably possible of the plant and the characteristics which distinguish that plant over known, related plants. In addition to the averments required for a utility application’s oath or declaration, plant patent applicants must also state that they have asexually reproduced the plant. If the plant is a newly found plant, the oath or declaration must also state that the plant was found in a cultivated area.

While plant drawings are typically photographic, they may also be presented in other mediums, such as in permanent watercolor renderings. As stated by the USPTO, “such drawings are not mechanical drawings and should be artistic and competent in their execution.”

Pursuing a plant patent can be invaluable, particularly in the growing hemp industry. However, it is also a complex legal endeavor. For guidance, we encourage businesses to work with counsel experienced in both intellectual property and cannabis law.

If you have questions, please contact us

If you have any questions or if you would like to discuss the matter further, please contact me, Libby Babu Varghese, or the Scarinci Hollenbeck attorney with whom you work, at 201-806-3364.