Patenting and trademarking plants isn't new, but it is an area of growing concern and confusion in the horticulture industry here and abroad. Most readers likely think of intellectual property (IP) as thought-related inventions, such as novels or new kinds of software. However, since 1930, laws related to the protection of intellectual property have been extended to the discovery and development of plant species, varieties, and cultivars.
The purpose of this paper is to briefly explain United States laws governing horticultural patents and trademarks and to demonstrate how Flowers by the Sea Farm and Online Nursery (FBTS) complies with those laws. In the highlighted list of plant traits on every plant description page in our online catalog, we note whether it has received a plant patent number (implying either that the patent is pending or granted) or is in the application process (PPAF -- plant patent applied for).
It is common for growers, garden writers and others to misuse patents and trademarks. This misuse can result in confusion for growers as well as customers who want to make sure that they are buying the specific product they want. Misuse can also lead to costly litigation. Buying a patented plant does not give you the license to propagate it. Illegal propagation of a patented plant is similar to making copies of books or software without paying the author and publisher. It is actionable.
It is our intent here to help customers and anyone who grows horticultural plants -- such as flowering perennials -- to become familiar with the following matters: scientific naming of plants; terminology involved in trademarking and patenting; the difference between patents and trademarks; some historical dates related to plant patenting and trademarking; and how FBTS follows the laws (this section also talks a bit about plant research and patenting at FBTS as well as how violation of our patents harms us).Botanical Naming of Plants
Each plant has a botanical name (sometimes called "scientific name") consisting of two or more words. This structure is called binomial ("bi" for two and "nomial" for name) nomenclature.
The first word in a scientific plant name is in Latin and is the genus or group to which a plant belongs. The second is the species name (sometimes called "epithet") within the group. Generally, it is Latin, but occasionally it is Greek. An example of a completely Latin name is Salvia chamaedryoides, which is commonly known as Germander Sage. An example with a Greek epithet is Salvia eremostachya (Sand Sage), and the epithet means "desert stachys."
Additional words may provide the plant's varietal name, cultivar name and, sometimes, the name of someone who first identified the plant or legally published its name (for example, Salvia mellifera Greene, which refers to the 19th and 20th century botanist Edward Lee Greene). Sometimes the species name will be a Latin form of a plant explorer's name as in Salvia greggii, in which "greggii" indicates that this particular species of sage was discovered by Josiah Gregg. 1Naming Terminology
Variety: A plant referred to as a variety is one that is found in the wild and is related to a previously discovered species. To qualify as a variety, the plant's seeds must "come true," which means they must reliably reproduce copies of the parent plant. FBTS carries Salvia chamaedryoides var. isochroma, which is commonly known as Silver Germander Sage or Marine Blue Sage. The "var." stands for variety. The variety name -- "isochroma" – is neither capitalized nor surrounded by single quote marks as in a cultivar name.
Cultivar: This term means "cultivated variety," so it is a plant developed in a garden or greenhouse. A cultivar may be an improved form of a single species or a hybrid of two species. It may be developed intentionally or discovered by accident in the greenhouse and then increased through various vegetative, asexual methods, such as cuttings. An example of a cultivar is Salvia greggii 'Playa Rosa', commonly called Pink Beach Autumn Sage, which was developed by the Portland, Oregon, nursery Xera. Any plant sold under a particular scientific cultivar name is supposed to be propagated from the genetic material of its parent plant and be genetically identical.
When horticultural growers discover new varieties or develop new cultivars, they select botanical varietal or cultivar names based on internationally accepted rules of naming and then establish the names by publishing them in their catalogs and in professional journals. 2
This all adds up to the plant's nomenclature -- the structure of its botanical name, such as (1) genus + species + varietal term or (2) genus + species + cultivar name -- which is used to classify the plant.
Botanical name, variety and cultivar are all important terms involved in trademarking and patenting of plants. Here is some more key terminology.
International Code of Nomenclature for Cultivated Plants: The ICNCP is an internationally agreed-upon code published as a book. It is the basis for scientific naming of horticultural plants worldwide.
International Horticultural Congress: Originally called the International Botanical Congress, this organization meets every four years and rules on any changes in the ICNCP code.
Sexual Propagation: This refers to propagation of plants by seed or tuber.
Asexual Propagation: This form of plant reproduction involves rooting cuttings or cloning plant cells to create new plants. Most hybrids, except for F-1 types, are asexually propagated.
Intellectual Property: In horticulture, the term "intellectual property" refers to the thought process that goes into creating registered trademark names for cultivars that growers introduce. It also applies to the research involved in developing the cultivars. Patenting is a tool to protect investment in research and development by allowing a plant developer to have a monopoly on sales of a plant.
Trademark, Registered Trademark and Patent: These are legal tools that give plant developers certain licensing rights allowing them to charge licensing fees related to plant sales. All three terms are explained in the next section of this paper.Difference Between Trademarks and Patents
Plant trademarks and patents go hand in hand, but are significantly different legal tools for legally enforcing rights to the naming and use of plants.Plant Trademark
A plant trademark is a legal right to a monopoly on a name or symbol affiliated with a particular plant cultivar, but not to the plant itself. Owners apply to the U.S. Patent and Trademark Office (USPTO) for ownership of the name and may keep reapplying every ten years. If a plant has a registered trademark but is not patented, you can sell the plant using its cultivar name. However, it is possible you may not be allowed to sell it using its registered trademark name.
The symbol used to signify a grower's intent to trademark a plant name with the USPTO is the superscript "TM" following the trademarked name. This symbol doesn't give the owner of the name legal rights to the name. To obtain a monopoly on the name, the grower needs to apply for a registered trademark, which is symbolized by the superscript "®" following the name.
Although mistakes occur, trademark-registered names are supposed to be different from variety and cultivar names. Suppose that FBTS discovers a new kind of peach colored Salvia greggii among its crops and gives it the cultivar name Salvia greggii 'Marlene.' Then suppose that we apply to the U.S. Patent and Trade Office to register a trademarked name for the plant.
We should not ask for "Marlene® Autumn Sage (Salvia greggii ' Marlene')." If the USPTO were to accidentally allow this to happen, the trademark would automatically become unenforceable and generic because the plant's cultivar name is "Marlene." Instead, we could choose somthing like "Peachy Keen® Autumn Sage (Salvia greggii 'Marlene')."
Some growers get around this trademark vs. cultivar naming problem by giving a new plant a nonsense cultivar name. So, if we gave our fictional plant a cultivar name of "R23wixwax," then we could register it as "Marlene® Autumn Sage (Salvia greggii 'R23wixwax'). By the way, the genus (Salvia) and species (greggii) names are italicized in the botanical name, but not the cultivar name. It is surrounded by single quote marks.
The great likelihood would be that growers would want to sell the plant under the trademark name, because "Marlene" is recognizable and sounds prettier than "R23wixwax." However, growers can't sell plants under their registered, trademarked name without paying the trademark holder for a license to do so. Also, trademark holders usually won't license growers to use their registered name for a plant unless growers purchase the plant starts from authorized sources.
The fictional Marlene® Autumn Sage still could run into trademarking trouble if FBTS were to make errors in how it used the name and enforced its use. Owners of registered trademarked plant names often misstate trademarked names and their licensees do as well. A trademark becomes invalid (generic) if the owner doesn't correct the errors, such as by (1) accurately publishing the name throughout a catalog, (2) enforcing its correct use by licensees and (3) litigating when unlicensed growers use the name. If a registered plant name goes generic, anyone may sell the plant under that name. Considering the fictional trademark again, a common error would be to write the name as "Marlene Autumn Sage (Salvia greggii 'R23wixwax'®). But the registration mark needs to follow "Marlene," which is the trademarked part of the name.
Sometimes other complications occur, such as multiple growers registering different names for the same cultivar. This can be confusing to customers who may buy all of these plants thinking that each is individual. A classic example is the rose cultivar Rosa 'Korlanum', which is trademarked under three names -- Surrey, Sommerwind and Vente D'ete. So, this is one reason why some plant developers seek further protection of their brand through patenting.
Ultimately, the most important thing to remember about trademarks is that they only provide ownership of a name, not genetic material -- the domain of plant patents.3Plant Patents
The USPTO is the agency in charge of granting all patent and trademark rights for use and control in US commerce. The form of patent which primarily affects propagation of Salvias is provided under the Plant Patent Act (PPA).
In contrast to registered trademarks, plant patents are not renewable. They last for 20 years from date of application. The patent refers to a single claim: "a new variety of [GENUS] Plant Named ['CULTIVAR NAME']. A patent is an exclusionary right, giving the patent holder the right to exclude others from propagating, using or importing the plant or part of a plant, e.g. cut flower.
PPA patents, which are provided under the Plant Patent Act (35 U.S.C. 151),5 limit asexual (buds, cuttings or cells) propagation of plants. The patented plant must have arisen by hand and brain of man. Eligible novel varieties may have been developed by deliberate hybridization, or by chance hybridization or as a chance discovery (e.g. sport) provided the chance occurrence took place and was found in a cultivated area. This, sports found in a nursery may be patentable. Sports or seedlings found in the wild are not eligible for patent protection.
PVPA patents are allowed under the Plant Variety Protection Act (7 U.S.C. 2327).6 They limit propagation by sexual means (seed and seeded offspring of F-1 hybrids) as well as asexual reproduction by tubers of plants patented under the PVPA Act. The Federal Register notes that these plants are reproduced from "new, distinct, uniform, and stable" seed and tubers.7 A plant variety is not a cultivar. A variety is a group of plants -- found growing on its own in nature -- within a particular species of a genus and which retains the same characteristics when planted time and again from their seed or tubers.
Utility Patent: Whereas a plant patent is available for a single claim of a new variety, the "traditional" utility patent (i.e. "ordinary" patent) is available for multiple claims of novel characteristics which arise from technically-described novel breeding processes. Utility patent protection extends beyond asexual propagation, into any propagation or any derivation arising from infringement of the declared art. Utility patents have been rarely sought in the nursery industry – being relatively expensive and technically difficult to draft.Plant Utility Patents8 (227 U.S.P.Q. 443),9 became available through amendment of the benchmark 1980 Diamond v. Chakrabarty (447 U.S. 303)10 decision, which held that some forms of life are patentable as useful inventions.
In its 2015 report "Protection of Plant Inventions in the U.S. and Benefits," the USPTO states a number of characteristics that may qualify a plant, plant part or "class of varieties" for a utility patent. These include genetic modification and new ways of "producing or using" plants and varieties.11
Plant Patent Applied For or PPAF: Plant breeders and their licensed producers may use these terms to indicate that a patent has been filed, is pending, and may "issue" as a granted patent shortly. Whilst it is not illegal to propagate during PPAF stage, it would be an infringement to continue to grow or to sell any plants on and from the date of patent grant. In other words, PPAF puts the nursery industry on notice that a patent application is in process and may issue at any time.
Plant Breeders Rights or PBR: The equivalent form of variety protection available in the rest of the World. Many varieties in international commerce have both US Plant Patent Rights and selected country Plant Breeders Rights. In contrast with the plant patent system (which is a paper-only system), the PBR process requires candidate varieties to be physically examined at an official testing facility, for "Distinctness, Uniformity and Stability." US Plant Patents and foreign PBRs operate under an international treaty (UPOV) which attempts to harmonize breeders' rights legislation worldwide.
As yet, PUP patents have had little impact on the horticulture industry. They have been used in crop production of GMO food plants -- such as corn and soy -- which, for example, have been genetically altered to withstand certain herbicides. Most recently, the Cannabis12 industry has begun seeking product protection through utility patents. Also, large seed houses have obtained plant utility patents for innovations among a limited range of extremely popular ornamentals, such as petunias.13Art as Early Trademarks for Orchard Products
Two of the most important thing to remember about plant patents, in general, are (1) they allow a single person or entity that discovers or develops a plant to own rights to the sale and use of that plant and (2) plants that are patented can only be sold by a grower or used by a researcher either of whom is licensed by the holder of the patent.
The roots of American trademarking and patenting of plants began to grow in the fruit industry of the mid-19th century. At that time, agricultural commerce was beginning to spread nationwide due to the growth of shipping on rivers and canals as well as by railroad.
Due to serendipitous cross-pollination of orchards on the East Coast by birds, insects and wind, new species of apples, pears and stone fruits began to emerge. As nurseries discovered these varieties and began to develop them, the owners started becoming concerned about how to protect the products they had developed. Writing for Smithsonian, Daniel J. Kevles notes that there was worrisome confusion created by multiple names springing up for individual plants.
Kevles reports that as fruit varieties burgeoned, so did a confusing array of synonyms for the varieties. To protect their efforts and the reputation of their products, fruit developers turned to artists to render botanically accurate pictures of their fruit. This is a good point at which to begin a rough timeline of U.S. trademarking and patenting of plants.14Plant Trademarking and Patenting Timeline
1847 – Art as Trademarking: Nurseryman and Massachusetts Horticultural Society member Charles M. Hovey publishes illustrated prints of American fruit trees that were originally from Europe. In 1851, Hovey published a book of prints called Fruits of America, Volume I and followed up with volume 2 in 1856.15
1864 – First International Horticultural Congress: Horticultural scientists from around the world organize in Belgium and consider codifying scientific naming of plants.16
1867 – American Fruit Growers Develop Naming Code: The first national plant growers' organization, the American Pomological Society, creates code of nomenclature for cultivated plants.17
1906 – Plants Introduced as Intellectual Property: Nursery owners unsuccessfully lobby Congress for passage of a bill to protect the intellectual property of plant development.18
1930 – U.S. Plant Patent Act: Congress passed the PPA to encourage plant breeding and increase genetic diversity. The Act covered asexual reproduction of plants.19
1952 – First International Horticultural Code: The First International Code of Nomenclature for Cultivated Plants was published to standardize scientific naming of plant cultivars.20
1970 – U.S. Plant Variety Protection Act: Congress passed the PVPA to extend patent rights to plants grown from seeds and tubers. The PVPA requires that patented seeds be placed in official seed depositories. Farmers and plant researchers may save, but not sell, seed from crops.21
1980 – Patenting Life as Useful Invention: The Diamond v. Chakrabarty decision held that a living thing -- genetically modified bacteria -- could be patented as a useful invention.22 This led to the biotechnology explosion and to patenting plants and plant genetic material as inventions.23
How FBTS Follows the Laws
At FBTS it is our policy to abide by trademark and patent laws relating to plant names we are licensed to use and patented plants we are licensed to sell. Also, it is our practice to apply for patents when we develop exceptional plants. So, we are careful to make sure that our own registered trademarks and patents are not violated.
The law allows growers to apply for a license from the owner of a registered trademark when growers want to use the name to sell legally active, properly trademarked plants. However, companies holding legally active registered trademarks often require purchase of plant starts from their companies. When growing other developers' plants, FBTS pays licensing fees, purchases starts as mandated and then publishes the registered trademarked names and botanical names correctly as previously described in this paper.
If a plant developer nullifies a registered trademark through faulty trademarking, incorrect publication of the trademark name or by allowing others to misuse the name, then we are not compelled to purchase a license to use the trademarked name and do not have to use the trademark or registered trademark format for that plant on our website or in any printed materials.
Regarding plant patents, we do not propagate or sell patented plants unless we meet the patent holder's legal requirements, which may involve (1) paying for licensing directly from the patent holder or (2) purchasing propagating material from licensed dealers. We also don't propagate ones for which a patent application is published and which are designated PPAF while pending receipt of a patent. In cases where no patent application is published, growers are not subject to liability for sales of a PFAF plant up through and until the date of the actual issuance of the plant's patent. However, when we are a licensee, we follow the patent laws by paying royalties, recording sales, and properly posting the patent number in our catalog and on our plant tags.
FBTS maintains an active research program through which we sometimes patent plants. It takes many hours and even years of work to reach the stage of securing a patent. Plant development is an exacting process that requires a sizeable investment of time and money. It financially harms FBTS if a customer purchases one of our patented plants, then propagates it without licensing. Unlicensed propagation is against the law when done for any purpose. This is true whether done for profit, for a nonprofit fundraiser, or for personal use -- such as for increasing the number of the plants in one's own garden. It can also hurt a plant developer's reputation if plants that are grown illegally are poorly reproduced.
So, we expect growers -- whether professionals or home gardeners -- of any of our trademarked or patented plants to follow plant trademark and patent rules.
Flowers by the Sea is pleased to provide these notes in good faith, in the belief that they represent industry best practice. However, readers are advised that Flowers by the Sea is not qualified or permitted to give any legal advice or to practice at the US Patent and Trademark Office. Therefore, these notes are provided on the express condition that they are intended for general guidance only and may not be relied upon as definitive of any particular situation. Accordingly, Flowers by the Sea advises readers that they should obtain legal advice from a qualified attorney if they have any questions about plant patents and trademarks.
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2. "Variety vs. Cultivar." University of Saskatchewan. Retrieved from https://agbio.usask.ca/misc-cultivar
3. Avent, T. "Name that Plant." 2007. Plant Delights Nursery. Retrieved from https://www.plantdelights.com/Trademarks-in-Horticulture/products/534/
4. "35 USC 151 – Issue of a Patent." Cornell University Law School. Retrieved at https://www.law.cornell.edu/uscode/text/35/151
5. "Plant Variety Protection Act and Regulations and Rules of Practice." 2006. United States Department of Agriculture. Retrieved at https://www.ams.usda.gov/AMSv1.0/getfile?dDocName=STELDEV3002796
6. "Notice of Request for Revision of a Currently Approved Collection Application for Plant Variety Protection Certification and Objective Description of Variety." 2012. Federal Register. Retrieved at https://www.federalregister.gov/articles/2012/05/30/2012-13066/notice-of-request-for-revision-of-a-currently-approved-collection-application-for-plant-variety
7. "2105 Patentable Subject Matter -- Living Subject Matter [R-9]." 2012. U.S. Patent and Trademark Office. Retrieved at https://www.uspto.gov/web/offices/pac/mpep/s2105.html
8. "Ex parte Hibberd." Life Sciences Foundation. Retrieved at https://www.lifesciencesfoundation.org/events-item-620.html.
9. "Diamond v. Chakrabarty, 447 U.S. 303 (1980) 447 U.S. 303." U.S. Supreme Court. Retrieved at https://caselaw.lp.findlaw.com/cgi-bin/getcase.pl?court=us&vol=447&invol=303
10. Sukhapinda, K."Protection of Plant Inventions in the U.S. and Benefits." 2015. U.S. Patent and Trademark Office. Retrieved at https://www.eapvp.org/report/docs/brunei/04-6%20Protection%20of%20Plant%20Related%20Inventions%20in%20the%20U.S.%20and%20Benfits.pdf
11. Grimm, N. et al. "Biotech Institute's Growing Patent Portfolio -- U.S. Patent No. 9,095,554 and the Path Forward." 2017. Patent Docs. Retrieved at https://www.patentdocs.org/2017/11/biotech-institutes-growing-patent-portfolio-us-patent-no-9095554-and-the-path-forward.html.
12. "Protection Information." 2018. PanAmerican Seed. Retrieved at https://www.panamseed.com/protection.aspx.
13. "The UPOV System of Plant Variety Protection." UPOV. Retrieved at https://www.upov.int/about/en/upov_system.html.
14. Kevles, D. J. "How to Trademark a Fruit." 2011. Smithsonian. Retrieved at https://www.smithsonianmag.com/arts-culture/How-to-Trademark-a-Fruit.html?c=y&page=1
16. Stearn, W.T. "ICNCP – It All Started in 1952 or Did It? International Code of Nomenclature for Cultivated Plants." 1952. Bromeliad Society International. Retrieved at https://www.bsi.org/brom_info/cultivar/ICNCP.html
18. Kevles, D. J. "Patenting Life – A Historical Overview of Law, Interests, and Ethics." 2001. Legal Theory Workshop, Yale Law School. Retrieved at https://www.sba.oakland.edu/faculty/lauer/mis641b/readings/patenting%20life.pd
19. "Can IP Rights Protect Plants?" BiOS. Retrieved at https://www.patentlens.net/daisy/bios/1234
20. Avent, T. "Name that Plant." 2005. Plant Delights Nursery, Inc. Retrieved at https://www.plantdelights.com/blogs/articles/name-that-plant
21. Strachan, J.M. "Plant Variety Protection -- An Alternative to Patents." 1992. Probe. Retrieved at https://www.nal.usda.gov/pgdic/Probe/v2n2/plant.html
22. "2105 Patent Eligible Subject Matter -- Living Subject Matter [R-08.2017]." 2018. U.S. Patent and Trademark Office. Retrieved at https://www.uspto.gov/web/offices/pac/mpep/s2105.html.
23. "Patenting Life – A Brief History." 2005. Center for Food Safety. Retrieved at https://www.centerforfoodsafety.org/pubs/Patenting%20Life%20-%20A%20Brief%20History.pdf