Questions with Stephany Small

Questions with Stephany Small

Supplement - Cultivate ‘22

Learn what types of patents are available and which one(s) you need for your new plant.

June 8, 2022

Stephany Small is a patent agent at Panitch Schwarze Belisario & Nadel LLP, a firm that specializes in intellectual property law.

At her Cultivate session, “Intellectual property rights for your new plant cultivar,” she will discuss the factors and decision points breeders need to consider to protect their new plant as their intellectual property. She will also analyze how multiple types of IP protection can be combined to further secure the variety and, in certain cases, to overcome challenges that are imposed by the doctrine of patent exhaustion.

What are the options for protecting your plant’s intellectual property?

There are currently three options that exist in the U.S. for protecting a novel plant variety: Plant Patent, “Varietal” Utility Patent, and Plant Variety Protection. Which is most appropriate for a particular variety depends upon numerous factors, including, the timing of the first sale, anticipated value of the variety, and the competitive activities you are trying to prevent. Additionally, these types of protection are not mutually exclusive, so a breeder could obtain multiple types of protection over a variety. Thus, it is important for a breeder to consider which type(s) of protection should be secured for a particular variety.

How can a breeder decide which type of patent is right for their new plant?

Each of those three options have different costs, different scopes of protection, and slightly different exclusions. For instance, if you sold your plant anywhere in the world, you’re going to be excluded from being able to obtain the intellectual property. But that timeline can vary between the three different types. So sometimes it’s case-specific on what intellectual property you can obtain, just based on the facts of sale or public availability of your variety. It really comes down to the scope of protection that is going to be sufficient for your needs and also the cost. It is not necessary for someone to obtain all types of intellectual property rights for each cultivar. That’s typically not recommended.

In general, plant patents are the bread-and-butter for varietal protection for most people in most situations. That’s going to be what people will use and gravitate towards, but there are very specific reasons to get another type of protection. I certainly will talk through that and give listeners an understanding of the differences between the different types of plant patents, plant variety protection certificates and utility patents, and of those three which would be right for them, as well as the thought process for that particular situation.

What are some of the common IP mistakes breeders should try to avoid?

Before selling, offering it for sale or publicly distributing it in any way, they should have their IP strategy in place. Once you make your variety available, that starts the timeline and starts to limit you in the ways you’re able to protect your variety.

What can attendees hope to learn from your talk?

I hope the message that is received is to think about their intellectual property strategy on the front end. And also to appreciate the importance of obtaining intellectual property rights for varieties. I’m sure most breeders appreciate how much energy, expense and time goes into making a new variety. But without the proper strategy in place, you could potentially lose some of the opportunities to recoup the cost, expense and the time you put into generating that cultivar.

Want to go?

Intellectual Property Rights for Your New Plant Cultivar
Tuesday, July 19, 11:00 a.m. - 12:00 p.m.; Room: A120