Hemp Industry Magazine Fall 2019

10 HEMP INDUSTRY MAGAZINE • FALL 2019 cover the creation of a new or improved product, process or machine. Some consider utility patents the best for cannabis breeders because they cover both sexually and asexually prop- agated new varieties, and because plant breeders can make multiple claims to cover the specific elements of a plant. “The best protection you can get to protect your genetics and its progeny is getting a utility patent on a variety,” Mosher said. “Varieties have to show stability over at least six to eight generations, but that is ultimately up to the examiner in most cases.” But because a utility patent is broader and more complicated, it can also take longer to file and defend, said Milton Springut, an intellectual-property lawyer in NewYork City. “It’s really all a function of how complex and how much time (they take),” he said. Costs are higher, too.With legal fees, a utility patent can cost $8,000 to $15,000, Springut said. Utility patents often will include maintenance fees and costs for updates as well. In addition to varieties, utility patents protect genes, traits, methods and plant parts. Mathur said that utility patents are most useful for genetic markers and traits, and they also allow breeders to license intellectual property. “The direction intellectual property is going is understanding the mutations, snips and collections of snips involved that are responsible for a trait,” Mathur said. Material Transfer Agreements Once plant breeders patent their plants, genes, traits and other protected genet- ics, they can license their intellectual property to other breeders through material transfer agreements (MTAs). An MTA is a contract between two parties that protects the intellectual property of the owner while allowing the licensing party to achieve new breeding goals. “The challenge in modern agriculture is (that) most of the agronomically im- portant traits—like yields, cannabinoid profiles, high growth or flower consis- tency—are complex traits,” Mathur said. “There is not one gene mutation; there are several different mutations that collectively make that a trait.” Breeders can file patents and own the markers that are responsible for that trait.Then, if they have a collection of mutations that offer particular charac- teristics in a plant, that is patentable as well, he said. For example, Mathur said, one com- pany has used genome-editing CRISPR technology to isolate and patent the gene that knocks out powdery mildew. Devel- oping that gene in marijuana or hemp to create powdery mildew-resistant strains would be “patentable by gene interrup- tion, but you’re actually licensing the sequence from somebody else, so it’s pretty complicated,” Mathur said. Mosher said her company uses MTAs to license other breeders’ genetics, a practice that is standard in agriculture. The vegetable industry, for example, has a membership platform to allow plant breeders to license intellectual property. International Licensing Platform (ILP) Vegetable guarantees worldwide access to patents that cover biological material for vegetable breeding. Through patent registration and a licensing system, ILPVegetable allows vegetable breeders to license the traits they need. Non-patented IP Patents aren’t the only ways to protect a breeder’s work. A trade secret—which is defined and protected by federal and state laws—is another type of intellectual property. Trade secrets are common among large companies that produce their own genetics and don’t want to pay for utility patents or subject their genetics to public access through the PVP system once patent protection expires. “The way of the future for protection is to develop pure F1 hybrids,” Mathur said, referring to the first generation of offspring from distinctly different parents. Used in selective breeding to create crossbreeds, seed produced by F1 hybrids is genetically unstable. “After iterative cycles of inbreeding purification through selection, you get what’s called isogenic parental lines: pure plants that you can then make genetically divergent crosses to create F1 hybrids with stable, uniform seed (for mass production),” Mathur noted. “Then (the parentage) is not detectable because the seeds of F1 hybrids will be scrambled eggs.” As long as no one reverse-engineers the cross—and the parentage is kept confidential—a breeding secret can be kept indefinitely. However, a trade secret is more difficult to enforce in state and federal courts and weaker than a patent, and the secret could ultimately be patented by another company. “You can keep your strains and people can (continue to) propagate your strains, but at scale, it makes no sense,” Mathur said. “This is why the seed companies have done what they’ve done in Big Ag, and we’re moving there. Precision ag is where hemp will be in the next five years.” Laura Drotleff writes for Hemp Industry Daily. You can reach her at [email protected] . NewWest Genetics CEO Wendy Mosher applied for Plant Variety Protection soon after it became available for hemp. Photo by Matthew Staver Protect Your Work

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