Plant Intellectual Property


The Morrison & Foerster Plant Intellectual Property Group is a cross-disciplinary practice group that handles a wide range of intellectual property issues related to plants and other agricultural products. The Group encompasses a unique combination of legal expertise in the patent, licensing, corporate, trademark, and litigation fields. The Plant Intellectual Property Group has extensive experience preparing and obtaining utility patents for new plant varieties, plant patents, and Plant Variety Protection (PVP) Certificates, advising and counseling clients regarding the handling of trademarks and variety denominations, and a strong litigation practice.

Additionally, the Group oversees and coordinates the filing and maintenance of plant patent, plant breeders rights (PBRs) and plant-related trademark rights overseas. The Group has significant related experience in numerous countries and regions outside the United States including the EU, Japan, Israel, Egypt, Turkey, Morocco, Chile, Argentina, Mexico, Brazil, Peru, South Africa, Australia, Canada and China. The Group also advises clients regarding the unique and complex issues related to the licensing of plant-related patents, PVPs and trademarks, both domestically and internationally.

Industry Trends

  • Aggressive protection of new plant varieties for use in the production of biofuels. Such varieties include Miscanthus, switchgrass, sorghum, and sugar cane.
     
  • In addition to seeking PVP and PBR protection of new varieties, agricultural companies are seeking utility and plant patent protection for these varieties.
     
  • Trait patent protection in addition to plant variety (seed deposit) protection is becoming more prevalent.
     
  • International PVP protection is becoming more prevalent. Key locations include: Chile, Mexico, Europe, Australia, Argentina, Brazil, South Africa, China, Israel, Peru, and Japan
     
  • More companies are utilizing aggressive licensing strategies to protect their plant IP. This includes shrinkwrap licenses on seed cans to limit use of proprietary seed and other plant material.
     
  • Companies from around the world are coming to the U.S. to seek protection of their new plant varieties developed abroad and enforcement of their IP in the U.S.
     
  • Trade secret protection of methods and procedures that provide clear business advantages in the agricultural industry are becoming more important.

Selected Representative Clients

  • HeinzSeed is the world’s leader in tomato breeding and production of ketchup from those tomatoes. We advise HeinzSeed on the protection of its tomato varieties worldwide and the development and implementation of its tomato intellectual property strategy.
     
  • The University of Minnesota is one of the world’s leading developers of apple varieties. We advise the University of Minnesota on the development of its intellectual property strategy related to its apple breeding program. Such strategic advice includes the preparation and filing of plant patents and PBR applications worldwide, the development of a variety naming and trademark strategy and a related licensing strategy.
     
  • The California Table Grape Commission is an agency of the state of California that has been set up to promote the California Table Grape Industry. The California Table Grape Commission is the exclusive licensee of certain table grape varieties developed by the USDA. We advise the California Table Grape Commission on the development and implementation of its intellectual property strategy. Such strategic advice includes the preparation and filing of plant patents and plant breeders rights applications around the world, the development of a variety name and trademark strategy and a related licensing strategy. We have also coordinated worldwide enforcement efforts for the commission.
     
  • Arcadia Biosciences is working to establish the groundwork for a carbon-credit methodology in China and other countries applicable to nitrogen-efficient crops. We represented Arcadia Biosciences in the development and implementation of its intellectual property strategy including patents, trademarks, and trade secrets for its technologies and programs, and provide general corporate, financing, and mergers and acquisitions advice.
     
  • Catchlight Energy, LLC, is a joint venture between Chevron Corporation and Weyerhaeuser Company focused on developing the next generation of renewable transportation fuels from nonfood sources. Catchlight Energy will research and develop technology for converting cellulose-based biomass into economical biofuels. We represent Catchlight Energy in general corporate and intellectual property matters.
     
  • Energy Biosciences Institute (“EBI”) is a new research and development organization that harnesses advanced knowledge in biology, the physical sciences, engineering, and environmental and social sciences to devise viable solutions to global energy challenges and reduce the impact of fossil fuels to global warming. EBI is the world’s first research institution solely dedicated to the new field of energy bioscience. They are initially focusing on the development of next-generation biofuels, but will also look into various applications of biology to the energy sector. EBI is a unique collaboration between the University of California, Berkeley, the Lawrence Berkeley National Laboratory, the University of Illinois, and BP, which will support the Institute with a 10-year $500-million grant. We are assisting EBI with the development and implementation of an IP protection strategy.
     
  • Institute for Food and Agricultural Research and Technology (“IRTA”), Generalitat of Catalonia, is a research institute of the Catalan Government that focuses on scientific research and technology transfer in the areas of agriculture, aquaculture, and agrifood. We provide IRTA with advice regarding the development and implementation of its intellectual property strategy and technology transfers.
     
  • Progeny Advanced Genetics is one of the world’s leading developers of new lettuce varieties. Progeny invented a hybrid lettuce breeding process that has led to the development of unique hybrid lettuce varieties. We manage Progeny’s intellectual property program including the patenting of its lettuce varieties and hybrid lettuce production process. We also have managed Progeny’s trademark program.
     
  • R&D Ag is the world’s leader in development of heat tolerant broccoli. We developed R&D Ag’s intellectual property program including obtaining a broad trait utility patent covering heat tolerant broccoli. We also handle R&D’s IP licensing and patent enforcement program.
     
  • The University of California, Davis is one of the world’s leading developers of new plant varieties. We have drafted and prosecuted numerous PVP, PBR, and plant patent applications to grant for UC Davis. Such applications were directed to new plant varieties including pistachios, potatoes, wheat, oats, peach and nectarine rootstock, grape rootstock, walnuts, and beans.
     
  • Stevia First Corporation is an early stage agribusiness focused on industrial scale production of an all-natural and zero-calorie sweetener from the Stevia plant. We represent Stevia First in general corporate and plant intellectual property matters.

HeinzSeed is the world’s leader in tomato breeding and production of ketchup from those tomatoes. We advise HeinzSeed on the protection of its tomato varieties worldwide and the development and implementation of its tomato intellectual property strategy.


The University of Minnesota is one of the world’s leading developers of apple varieties. We advise the University of Minnesota on the development of its intellectual property strategy related to its apple breeding program. Such strategic advice includes the preparation and filing of plant patents and PBR applications worldwide, the development of a variety naming and trademark strategy and a related licensing strategy.


The California Table Grape Commission is an agency of the state of California that has been set up to promote the California Table Grape Industry. The California Table Grape Commission is the exclusive licensee of certain table grape varieties developed by the USDA. We advise the California Table Grape Commission on the development and implementation of its intellectual property strategy. Such strategic advice includes the preparation and filing of plant patents and plant breeders rights applications around the world, the development of a variety name and trademark strategy and a related licensing strategy. We have also coordinated worldwide enforcement efforts for the commission.


Arcadia Biosciences is working to establish the groundwork for a carbon-credit methodology in China and other countries applicable to nitrogen-efficient crops. We represented Arcadia Biosciences in the development and implementation of its intellectual property strategy including patents, trademarks, and trade secrets for its technologies and programs, and provide general corporate, financing, and mergers and acquisitions advice.


Catchlight Energy, LLC, is a joint venture between Chevron Corporation and Weyerhaeuser Company focused on developing the next generation of renewable transportation fuels from nonfood sources. Catchlight Energy will research and develop technology for converting cellulose-based biomass into economical biofuels. We represent Catchlight Energy in general corporate and intellectual property matters.


Energy Biosciences Institute (“EBI”) is a new research and development organization that harnesses advanced knowledge in biology, the physical sciences, engineering, and environmental and social sciences to devise viable solutions to global energy challenges and reduce the impact of fossil fuels to global warming. EBI is the world’s first research institution solely dedicated to the new field of energy bioscience. They are initially focusing on the development of next-generation biofuels, but will also look into various applications of biology to the energy sector. EBI is a unique collaboration between the University of California, Berkeley, the Lawrence Berkeley National Laboratory, the University of Illinois, and BP, which will support the Institute with a 10-year $500-million grant. We are assisting EBI with the development and implementation of an IP protection strategy.


Institute for Food and Agricultural Research and Technology (“IRTA”), Generalitat of Catalonia, is a research institute of the Catalan Government that focuses on scientific research and technology transfer in the areas of agriculture, aquaculture, and agrifood. We provide IRTA with advice regarding the development and implementation of its intellectual property strategy and technology transfers.


Progeny Advanced Genetics is one of the world’s leading developers of new lettuce varieties. Progeny invented a hybrid lettuce breeding process that has led to the development of unique hybrid lettuce varieties. We manage Progeny’s intellectual property program including the patenting of its lettuce varieties and hybrid lettuce production process. We also have managed Progeny’s trademark program.


R&D Ag is the world’s leader in development of heat tolerant broccoli. We developed R&D Ag’s intellectual property program including obtaining a broad trait utility patent covering heat tolerant broccoli. We also handle R&D’s IP licensing and patent enforcement program.


The University of California, Davis is one of the world’s leading developers of new plant varieties. We have drafted and prosecuted numerous PVP, PBR, and plant patent applications to grant for UC Davis. Such applications were directed to new plant varieties including pistachios, potatoes, wheat, oats, peach and nectarine rootstock, grape rootstock, walnuts, and beans.


Stevia First Corporation is an early stage agribusiness focused on industrial scale production of an all-natural and zero-calorie sweetener from the Stevia plant. We represent Stevia First in general corporate and plant intellectual property matters.

Michael R. Ward
Partner
San Francisco
(415) 268-6237

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