How to get IP protection for new varieties of plants and animals

Nicholas Jones, partner, Withers & Rogers LLP.

However, seeking patent protection for such inventions may not be a straightforward matter.

The
American Department of Agriculture’s Food Allergy Research Group, which
led the peanut research, identified three proteins they believe to
cause the majority of allergic reactions. The scientists then combed
900 different varieties of peanut, looking for naturally-occurring
mutations with lower than expected levels of the dangerous proteins,
and used traditional cross-breeding techniques to produce the low-risk
nut.

Rachel Wallis, a partner and patent attorney at Withers & Rogers LLP.

In
Europe, for example, a patent may only be obtained if the technical
feasibility of the invention is not limited to the specific variety for
which protection is sought. In other words, it must be possible to
produce the invention in more than one variety.

The most famous
case in this area relates to the “Oncomouse”, a mouse genetically
modified to develop tumours. This was deemed a patentable invention
because other species could also be modified to develop tumours using
the same technical process.

A purely biological process

If
the new peanut had been developed as a result of an inventive genetic
modification it would have been eligible for patent protection.
However, under current European patent law, any plant and animal
variety developed by a purely biological process, such as
cross-breeding, is not regarded as a technical invention and is
therefore outside the scope of patent eligibility.

The
application of genomics to turbo-charge traditional breeding means that
the anti-allergy peanut is likely to be joined by an array of new
varieties of plants and animals that result from crosses made on the
basis of rapid genotyping of existing varieties to pinpoint desired
genes.

For example, a public-private partnership in the UK is
currently revolutionising commercial barley breeding in this way. The
project has studied 1,000 barley cultivars, identifying natural gene
variants that can improve important economic characteristics such as
yield and resistance to pests and disease.

But if new
varieties developed with a helping hand from genomics fall outside the
scope of patent protection, other forms of intellectual property
protection are available. However, research scientists and commercial
breeders need to think more creatively about how to wring the
commercial value from their inventions.

Plant variety rights

One
approach is to apply for plant variety rights, which may be obtained
for new botanical varieties. Such rights protect the breeder of a new
plant against other breeders producing, conditioning, selling or
marketing a similar variety. To qualify for a plant variety right, the
new plant must be distinct from other known varieties, as well as being
uniform. It must also be stably reproducible with the characteristics
that provide its distinctiveness.

A plant variety right
protects a specific variety and, in this case, the right could apply to
the specific variety of peanut. Were the peanut patentable, the patent
could have also applied to other types of nut sharing the same
characteristics. However, whilst narrower in scope, plant variety
rights can provide up to 30 years protection - a decade more than a
patent’s lifespan.

Registered trademarks

A trademark acts as a badge of origin of the goods or service provided by
a company or individual. With such a commercially viable product, the
researchers of the ‘low-risk’ peanut could develop a brand which is
widely recognisable to consumers. This could be in the form of a
distinctive name, logo, symbol or a combination of these elements.
Non-conventional trademarks also include colour, smell or sound.

The
trademark should serve as a distinction of origin rather than a
descriptor of the product. For example, it is unlikely that ‘nutty’
would gain successful trade mark status. On the other hand, invented
words, such as KODAK for films or Lego for toy bricks, have proved to
be two of the most distinctive and successful brands.

In the 1960s, a mould called Fusarium venenatum
was discovered and developed by researchers who were tasked with
finding alternative protein-rich foods. It was patented as a
‘mycoprotein’ in 1985 and launched to consumers in 1994 by Marlow
Foods, then part of the AstraZeneca group. The company created a brand
for the purpose of selling it to consumers, which is protected by a
trademark. Today the trademark, ‘Quorn’ is one of the UK’s leading
brands in the meat-replacement food market and is estimated as
accounting for 60 per cent of the market.

A registered
trademark can have an indefinite life and protection in other countries
can also be obtained via a Community or International trade mark. The
brand recognition and reputation that comes with a well-known
registered trademark, such as Quorn, can provide market protection
regardless of the patent position.

Community design / registered design rights

Community
and registered design rights can also be extremely useful for
protecting inventions that are not eligible for patent protection. For
example, should the inventors of the anti-allergy peanut decide to
develop a fully marketable product, they may decide to design
distinctive packaging or a logo for their peanut variety. If so, they
could protect the appearance of their product for up to 25 years with a
registered design right.

Patent rights

Although
essentially biological processes are not currently eligible for patent
protection, there are two cases, at least one of which will be heard
this summer by the European Patent Office’s Enlarged Board of Appeal,
which could re-define this section of patent law in Europe.

In
2002 and 2003, the European Patent Office granted patents to varieties
of broccoli and tomatoes respectively. Both had been developed through
conventional breeding techniques. Oppositions were filed against the
granted patents and questions relating to the cases have been referred
to the Enlarged Board of Appeal for consideration. The anticipated
decisions of the Enlarged Board will hopefully give useful and
definitive guidance to industry on the patent eligibility of such
inventions in the future.

Dr
Nicholas Jones is a partner and patent attorney at Withers & Rogers
LLP, specialising in biotechnology and pharmaceutical research and
development. He is a member of the Royal Pharmaceutical Society of
Great Britain and the Royal Society of Chemistry.

Rachel
Wallis is also a partner and patent attorney at the firm. She has a
degree in Medical and Veterinary Sciences from Cambridge University.

Further Information: http://bulletin.sciencebusiness.net/ebulletins/showissue.php3?page=/548/art/18990&ch=1