US > Intellectual property > Patent prosecution - plant patents: National
Patent prosecution: plant patents
Plant protection is a niche market and only a handful of firms offer service in this particular area. However, work done in related areas, such as biofuels and hybridization processes involving agricultural crops has also been considered.
Since the US is the world’s leader in plant prosecution, the firms listed in this section are active in filing rights of applications on behalf of plant breeders’ under the International Union for the Protection of New Varieties of Plants (the UPOV). In addition, these practices undertake licensing, plant-related litigation and work within the Plant Variety Protection Act (PVPA).
PRACTICE: A dozen intellectual property lawyers at Foley & Lardner LLP spend a considerable amount of time working with plants, advising up to 40 PVPAs annually on corn, soybeans and cotton. They are part of a ‘well known’ intellectual property group, offering services across the firm’s 19 US offices.
In praising the firm’s attorneys, clients say: ‘They understand the technologies, give appropriate and professional advice and have negotiation skills and creative ideas.’
In 2008, the practice filed utility patents for Brassica Protection Products, which developed an anti-cancer compound, found in broccoli.
The firm is also increasingly consolidating its strengths in green energy technologies, helping clients to license and protect products and services, in order to create alternative or clean energy.
Among the recently written patents by the intellectual property group is an apple tree named ‘Zari’, characterized by having early maturity and a very crisp and juicy pulp of fruit.
CLIENTS: A Dutch developer of tools for genetic engineering of plants, an Israeli horticultural developer, a major US developer of genetically engineered potato and oil-seed crops and a large Danish developer of horticultural crops are among the practice’s clients.
INDIVIDUALS: Richard Peet in Washington DC chairs the firm’s international practice and is also a member of the biotechnology & pharmaceutical team. Benjamin Berkowitz, also in Washington DC is experienced in prosecuting patents in the fields of plant molecular biology, chemical sensors and pharmaceuticals.
PRACTICE: With offices in Portland and Seattle, Klarquist Sparkman counts a team of over 60 lawyers and patent agents. Being one of few US practices protecting plant patents and with a ‘long-established’ reputation in this field, the firm represents a number of internationally renowned growers and breeders of plants, ranging from flowering plants to fruit trees, ornamental trees, grasses and shrubs. Three attorneys devote their time to plant patent protection, filing an increasing number of patents per year for both a national and foreign clientele.
Among recently obtained patents is a distinct hybrid of Heuchera plant named ‘Ginger Ale’, characterized by lightly veiled colored foliage and creamy yellow flowers. In addition, the practice wrote a patent for a shrub rose plant called ‘JACmound’, characterized by its distinctive pink flowers with a white eye. With regards to berries, a new variety of asexually propagated raspberries named ‘Jeanne d’ Orléans’, characterized by greater fruit size, longer shelf line and fruit quality was filed by the practice.
CLIENTS: Among the array of clients are an Oregon nursery, a Georgia-based plant developer and an East Coast University. In addition to these are number of rose growers and various grass-seed producers as well as growers of oak and maple trees have sought the firm for legal advice.
INDIVIDUALS: With a PhD in biological sciences, Sheree Rybak in Portland is experienced in the preparation and prosecution of plant patents. Tanya Harding, also in Portland, has a strong background in biotechnology and plant biology and has vast expertise researching fields such as tobacco, barley, wheat and cucumber.
PRACTICE: Buchanan Ingersoll & Rooney is known in the patent market for its ‘significant’ licensing work and assignment for plant patent owners, with six intellectual property lawyers belonging to the biotechnology patent group.
The practice recently obtained a patent for a hybrid tea rose plant named ‘Meibderos’, which forms attractive double yellow suffused with red blossoms with a very strong fragrance. With regards to berries, the intellectual property group protected a raspberry plant named ‘Marcela’, which forms conical-shaped claret rose fruits suitable for harvest, shipment and marketing.
CLIENTS: England’s Medway Fruits, French rose-breeders Meilland International and Delbard, a number of small US nurseries and the University of California.
INDIVIDUALS: Throughout his 40-year-long successful career, Benton Duffett in Alexandria has secured more than 900 plant patents. Duffett is also experienced in the fields of organic and inorganic chemistry, synthetic polymer and fiber technology and in the hybridization processes involving agricultural crops.
PRACTICE: With deep roots in intellectual property, most of Christie, Parker & Hale’s 50 attorneys are degree-holders in the field of science or engineering including advanced degrees in biotechnology, biology, chemistry and biochemistry.
With offices in Pasadena and Newport Beach, California, the firm’s client roster includes about ten US-based nurseries, for which the practice works actively on plant patent protection. Since Vincent Gioia founded the practice in the 1990s, three lawyers have been operating in the field, continuing to write about 50 plant patents annually.
Among last year’s work is a new variety of rose named ‘Bindi Tip’, which is suitable for ornamental decoration, having a dense compact growth habit.
CLIENTS: Monrovia Nursery, Hines Nurseries, Agricultural Research & Development in California, Hayes Horticulture and Weeks Wholesale Growers are some of the firm’s plant clients.
INDIVIDUALS: Pasadena-based Gregory Lampert is the head of the plant variety protection group and also specializes in the mechanical and electromechanical art areas.
PRACTICE: Scientific training coupled with industry experience allows Jondle & Associates’s practitioners to excel in this niche market, providing plant protection for utility and plant patents and breeding rights.
The intellectual property group obtained a patent for a Peruvian lily called ‘Mauve Majesty’, originated from a hybridization made in 2002. The flower was selected for its distinctive mauve flower color, continuous flowering and its strong, upright flower stems.
Most of the practice’s plant clients are based in the US and in the Netherlands, and produce a wide range of flowers, berries, fruits and agronomic crops. The practice also handles considerable workload in patent-like protection for sexually reproduced and tuber-propagated plant varieties.
CLIENTS: International clients producing flowers and tropical plants as well as grapevines have sought the firm for patent protection. The client roster also includes a top US soybean producer and a large US cotton producer.
INDIVIDUALS: Robert Jondle has over 20 years of experience in intellectual property matters relating to biotechnology, biomedical, pharmaceutical and plant patents.
Knobbe Martens Olson & Bear Llp
PRACTICE: The plant biology and agriculture group at Knobbe Martens Olson & Bear LLP counts Sun World as its biggest client, for which it manages applications for plums, kiwis, apricots and table grapes in countries such as South Africa, New Zealand and Australia.
With nearly 250 lawyers specializing in intellectual property law, the firm has a small plant protection practice located in San Francisco and Orange County. The practice has ‘built a strong reputation over the years’, through an established network in over 50 countries and has been filing patents for chrysanthemums and various other flowers. Representing companies in all areas of plant-related technologies, the intellectual property group was successful in protecting an artificial surface for the growing of turf forming grasses and other plants.
CLIENTS: The majority of the practice’s clients are fruit producers, but it also handles matters relating to agricultural products, foreign plant variety and plant breeders’ rights.
INDIVIDUALS: Eric Furman in San Diego advises clients in the fields of genetically modified plants and organisms, dietary supplements and cosmetics. Andrew Merickel in San Francisco has a PhD in neuroscience and specializes in the fields of biotechnology, dairy products and processes, pharmaceuticals and semiconductor/integrated circuit fabrication.
PRACTICE: Headquartered in San Francisco, full-service firm Morrison & Foerster is ‘highly regarded’ by clients, who appreciated the intellectual property attorneys’ ‘professionalism’. The plant patent practice offers protection for new plant varieties, such as oat, new walnut trees and wheat species. The group has also been active in licensing a strawberry-breeding program for a number of years.
To cope with the increasing demand for bio-fuels, the practice is also handling a variety of feedstock patents for clients such as Syngenta and Monsanto, for which the practice is helping to protect a genetically modified maize variety with high starch content for ethanol production.
CLIENTS: The firm attracts clients such as BP, the University of California, the University of Illinois, Mendel Biotechnology, Bodegas Esmeralda, Dole Food Company, Progeny Advanced Genetics, Arcadia Biosciences and the California Table Grape Commission.
INDIVIDUALS: Michael Ward in San Francisco heads the life sciences patent practice and advises numerous life sciences companies, universities and research institutions on matters relating to microbiology and botanics. Clients describe him as ‘highly knowledgeable in agriculture-related biotechnology’.
PRACTICE: Washington intellectual property boutique Stratton Ballew counts a handful of lawyers, but its work in plant protection has achieved notable results in 2008, particularly in the market relating to fruit-tree litigation. Out of Vashon Island and in Yakima, the firm works closely with breeders and nurseries, protecting ornamental flowers and small berries. The practice is also active in licensing, helping breeders worldwide to produce new varieties of fruits and flowers throughout the year.
Among recent highlights, the practice secured a patent for a new Gala-type apple tree named ‘Dalirail’, which is notable for its intense coloration and early maturity.
CLIENTS: Fall Creek Farm and Nursery, Pink Lady America, HortResearch in New Zealand and SNC Elaris in France are some of the firm’s clients.
INDIVIDUALS: Michelle Boos in the Yakima office handles most of the plant’s prosecution work, while Patrick Ballew also in Yakima and Rex Stratton on Vashon Island, specialize on litigation.
PRACTICE: Located in Pittsburgh, Pennsylvania The Webb Law Firm counts 30 intellectual property attorneys, and its attorneys work with local and international breeders to secure protection for agribiotech developments such as food products, ornamental flowers, trees and shrubs.
The practice prosecutes about 20-30 plant patents annually, offering a full patent service extending to PVPA, UPOV, licensing and enforcement matters. Among the practice’s recent written patents is a new variety of strawberry named ‘Cabot’, characterized by few flowers, large colored fruits and resistance to red steel root.
CLIENTS: The biggest plant client is Oglevee Nursery in Virginia, but matters are also handled for Penn State University, Elsner and Benary in Germany and Dutch breeder Grünewald.
INDIVIDUALS: Firm’s president Russell Orkin is its best-known attorney, while Julie Meder and Kent Baldauf are also experienced in plant protection.
Townsend And Townsend And Crew
PRACTICE: West Coast intellectual property firm Townsend and Townsend and Crew boasts over 150 attorneys and has a small but established presence in the field of plant protection. Prosecuting around ten patents for new types of fruits, such as strawberries, grapes, oranges and mandarins per year, the practice also handles PVPA work, mostly in relation to asparagus and lima beans.
Notable work includes obtaining a patent for a new type of artichoke plant named ‘BCV 8-11’, distinguished by a dark and vibrant violent hue and producing tender fruit and fruit buds. The practice also managed to protect a new variety of avocado trees called ‘Sir Prize’, characterized by large and early-maturing fruits for the University of California.
CLIENTS: Apart from handling matters for the University of California, the practice works for an artichoke cultivator and a variety of commercial breeders.
INDIVIDUALS: Clients benefit from Kenneth Weber and Matthew Hinsch’s advanced degrees in plant pathology, while Kevin Bastian counsels on areas such as plant molecular biology, glycobiology, cell cycle regulation and drug discovery. All the attorneys are based in San Francisco.
PRACTICE: Winston & Strawn LLP is active in the plant protection field, writing about 30 patents annually. Ornamental flowers represent the bulk of the practice’s work, particularly in relation to varieties such as roses, geraniums, carnations and poinsettias. PVPA work, litigation and licensing are also some of the practice’s expertise in the market, but to a more limited extent.
In 2008, the intellectual property group successfully patented a type of chrysanthemum named ‘Ivory Time Lemon’, being characterized by lemon decorative flowers and dark glossy foliage.
CLIENTS: The California Florida Plant Company and English chrysanthemum breeder Cleangro are some of the firm’s most notable clients.
INDIVIDUALS: Becky Troutman in San Francisco represents clients in industries such as agriculture, biotechnology, pharmaceuticals and medical devices.