Have you recently developed a new plant variety that you are eager to introduce to the market? It's understandable; the countless hours spent in the greenhouse and selection fields, together with the significant cash investments—all aimed at bringing your innovation to life—can evoke a strong desire to expedite the commercialization process. However, to avoid crucial mistakes that can hinder your business success, it's essential to approach this with thoroughness and precision. Commercialization of a new plant cultivar requires careful consideration of various steps and associated costs, ranging from safeguarding your intellectual property rights to identifying optimal distribution channels, potential partners, and profitable market opportunities. In this article, we will aim to provide you with practical do's and don'ts, together with a high-level roadmap, all geared to guide your business to success.

As an initial step, gathering comprehensive information and formulating commercial and legal strategies are imperative. First, ascertain the readiness of your variety (and plant material) for commercialization. Plant breeders must possess a thorough understanding of their new cultivar, encompassing its growth habit, morphology, susceptibility to diseases, maturation period, water requirements, flowering cycle, consistency in yield, vernalization needs, trueness to type, etc. This knowledge is essential for effectively advising propagators, growers, and other relevant licensees on cultivation practices and evaluating the variety’s performance under diverse environmental conditions, particularly in outdoor or greenhouse/glasshouse/tunnel settings.

In addition, evaluating the stability of the variety with regards to breeding characteristics and multiplication profiles helps determine its suitability for large-scale propagation and uniformity maintenance throughout the commercial production stage. It is best to conduct a comparative analysis with existing plant varieties in the market to elucidate the distinctive traits of your plant.

While said assessment is conducted, it is crucial to maintain confidentiality regarding your new plant variety, as premature disclosure may jeopardize your ability to secure your intellectual property rights in the variety. Among the most significant pitfalls for plant breeders is the premature sharing of photos or information about a new variety on social media or other online platforms, particularly if accompanied by a name of said variety. You can do a simple test to find out your level of your current exposure: head over to Google and try to bring up connected search results using any name or reference associated with your variety. If you find relevant search results, you could be facing an issue. Uncontrolled public exposure can detrimentally impact your ability to secure plant patents, plant variety rights, or other forms of related intellectual property protection. Similarly, refrain from distributing plant material or seeds to third parties, publicly displaying your new variety in exhibitions, public trials, or documenting the variety with local plant organizations. Such actions may be construed as offering the product for sale/commercialization, potentially jeopardizing your ability to protect the variety and receive royalties. You can, however, conduct controlled, limited trials as long as this is backed up with the right type of internal policies and legal infrastructure.

As evident from the above, safeguarding the novel nature of a new plant cultivar is paramount in the process of bringing new varieties to market. Understanding concepts such as patents, plant variety/breeder’s rights, trademarks, and royalties is essential. By safeguarding your novel plant variety and registering it correctly, you ensure compensation for your significant investment in research and development.

If you're navigating this process for the first time or even if you have done this more than a few times already, consider partnering with experienced professionals or engaging the services of an agency well-versed in intellectual property matters. A knowledgeable partner can offer invaluable guidance and may even assist with patent costs. When evaluating potential partners, inquire about their distribution channels, track record in marketing, and ability to conduct trials and enforce IP rights. It's advisable to formalize the partnership with the appropriate agreement and as discussed above, refrain from sending plant material until a legal agreement and the right precautions are in place.

If you opt not to enter such partnership, hiring a specialized plant patent/PVR agent is advisable. These professionals possess intricate knowledge of plant variety, patent application processes, plant licensing procedures, and trademark applications. While patent lawyers with no prior experience in related plant/varietal IP can also help, they often command higher fees and, in most cases, lack expertise in plant-related intellectual property. Avoid engaging a family lawyer who lacks experience in this field, as oversight in this specialized area could have financial implications.

Subsequently, formulate a strategy to safeguard your intellectual property and secure royalties from your variety. Intellectual property protection is invaluable as it facilitates cost recovery for research and development, enables branding, and can prevent unauthorized reproduction of your product for up to two decades.

Another powerful type of registerable intellectual property right is Plant patents rights. Plant-related patents (mainly in the USA), grant exclusivity over the production, use, and sale of your invention. In the United States, two types of patents protect plant varieties: plant patents and utility patents. Plant patents safeguard asexually propagated plants, such as cultivated sports, mutants, or hybrids, excluding tuber-propagated plants. Compared to utility patents, which cover processes or improvements, plant patents are relatively economical. Utility patents encompass unique plant traits, phenotypes, or breeding methods.

Alternatively (and in some cases in addition to any other registered rights), you can seek certification under the Plant Variety Protection laws in your respective countries/jurisdictions. Plant variety protection (referred to as PVR/PBR) is one of the most common ways to protect your IP and as such, is available in many jurisdictions around the world. Commonly used for sexually reproduced and tuber-propagated plants, PVR certification will grant plant variety breeders exclusive propagating, growing, and marketing rights over their varieties. It's important to note that the cost and timing of filing vary in each country/territory. In many jurisdictions, particularly those under the international convention which regulates such rights ("UPOV"), interested parties must apply in a certain territory, within one year from the first sale, offer, or public presentation of any element of a variety was done in said territory. This timeframe extends to four years (and in some cases six years), for the rest of the world, from such initial sale, public disclosure, or disposal to third parties.

While patents and PVR safeguard the rights of the breeder or IP owner, trademarks serve marketers, consumers, and breeders and should play a significant role in any commercialization strategy. Trademarks can take the form of words or symbols to brand your variety or related products, aiding consumers in identifying its origin and preventing unauthorized use by others. Unlike patents, trademarks do not expire after 20 years. Registering a trademark for plant varieties involves intricate regulations, necessitating guidance from legal professionals specializing in this field. If done correctly, breeders can leverage the advantages of plant variety rights and trademarks. Used conjointly, these two types of intellectual property may compensate for each other’s disadvantages and help breeders or title holders generate revenue long after the IP in the variety had expired.

In many countries, The symbol ® denotes that the trademark is officially registered with the relevant country register, while the symbol ™ signifies that you are asserting the word, logo, or symbol as your trademark, albeit without formal registration. As mentioned above, registering a trademark offers numerous advantages. Regardless of the symbol used, it's imperative to consistently apply the trademark to your respective variety/related product and diligently monitor its use in the market.

Once you've safeguarded your intellectual property, licensing presents an effective avenue for monetization. Various licensing strategies exist, including: limited, broad, "Club" model, or open licensing. Limited or exclusive licensing permits you to license your product to select third parties, albeit potentially constraining market penetration and royalties. Broad licensing extends permission to third parties including competitors to sell your product, maximizing market reach, distribution, and profits. Open licensing grants permission to all growers and retailers to sell your product, reducing the likelihood of counterfeit products but diminishing exclusivity. Alternatively, controlling only the seed/propagated material sales, like broad licensing, maximizes distribution, market penetration, and profits.

All these legal measures serve to safeguard your ability to generate revenue for your business. It's essential to carefully consider these strategies (together with IPR monitoring and control measures), to ensure proper compensation from the use of your intellectual property by third parties.

Disclaimer: The article provided above is for educational purposes only and does not constitute legal or financial advice. Readers are encouraged to seek professional advice from qualified experts if they require assistance in any of the topics mentioned. Please contact Greenstone for an initial consultation to discuss how we can help your business maximize its potential.