Thanks for the kind words Herbert
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This is heartbreaking is so many ways. I was able to meet many of the Phylos team over the last couple years at speaking events, Cultivation Conferences, etc…and I was always so impressed with their “mission” in the industry and their database was amazing. To turn around and do what they are currently doing is just a tragedy. Especially for all the growers that have essentially paid for their own demise. Sadly, @reggie is correct that the overall lack of business experience in cannabis opens the door for predatory practices…the writing was on the wall for this to likely happen. But he is also correct, this is not ALL companies. Which means we need to be better about how we operate, who we trust, and aggressively support the companies doing it right.
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Steep Hill offers genetic tools, and doesn’t have a breeding program. I believe Medicinal Genomics also does not have a breeding program. We both offer full suit of genetic services, from basic single gene targeted analysis to full genome sequencing and analytics. These tools are the very same basic tools that are used in commercial agriculture for many important cash crops. You sequence, you analyze, find SNPs (Single Nucleotide Polymorphisms) or QTL’s (Qualitative Trait Loci) that can be used to follow specific genes or traits, and then you use those tools to accelerate your breeding program. The larger the number of traits you have sequence targets for, the larger the number of traits you can screen for at the same time, making screening for that rare pheno a reality, instead of a pipedream that requires you grow out thousands of seeds to figure out which ones might be the right ones. As for protecting the IP, PVP’s are useful, but don’t get you everything you might want, so it’s important to get a really good understanding of the limitation of each type of protection available, as well as the filing requirements for each type of protection. Then finally, don’t skimp. Go to a patent agent or patent attorney that knows biotechnology or plant biology that can help you really protect your innovation. Patents are very “topic specific” so a mechanical engineer, will be great for helping you patent your new extraction system, but may not be the best choice to help you protect your unique cultivar.
Another way to protect is actually in the vein of the Strainly model. It’s ironic, i was trying to start a tissue culture spin off a couple of years ago and was developing a downstream license idea where people could opt in to share the banked tissue for breeding projects with other breeders, all handled through the tissue culture bank and proceeds\roylaties would be paid on a decreasing scale out to a minimum royalty of 1% after the genetics were dilute out past a certain amount. But the idea was to have everyone put their genetics into a pool that everyone could share and if breeder X’s strain 1 was bred to breeder Y’s strain 2, the offspring would belong to tissue bank, but the breeders each got 25% of the royalties or profits, the bank took 50% and then if that strain was breed to something else, Breeder 1 and 2 each got 12.5% and breeder 3 got 25% etc
I see aspects of that in the Strainly model, and I think models like that offer an alternative to traditional patenting, as there is a legal licensing framework around it. But make no mistake, there will still be a problem with enforcement as there is no patent protection or PVP protection provided that way, UNLESS you also file for patents or PVP’s as well.
And i wouldn’t buy into the hype too much. I do NOT believe PhyloS has the huge advantage they say. We all have been developing tools for breeding, for about the same time. Further Steep Hill came out with the first sex and CBD tests, Medicinal genomics also have CBD tests as well as a powdery mildew test. So, I find it hard to believe that Medicinal Genomics and Steep Hill are behind Phylos. Which means the industry has options and they aren’t at a huge disadvantage. HOWEVER, if the industry remains complacent, they will end up at a disadvantage.
I’ve developed a “patent information” document that I"ll post here. It’s a primer on patents we give the clients who come to us for genetic analysis.
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What is a Utility Patent? What is a plant patent? Is a Plant Variety Protection Certificate a patent? What rights or protection is afforded by the various documents? How do you go about applying for a patent on a plant? What information is required to support a patent on a plant? Has anyone already applied for patents related to cannabis? The information provided below is borrowed from various portions of the United States Patent Office website, as well as other online resources (e.g., Perennial Patent Co, Citizen.org). A summary of the differences between the types of intellectual property protection available for plants is given first, followed by more detailed description of the different types.
There are three types of intellectual property protection for newly “invented” plants in the United States: Plant Variety Protection Certificates, Utility Patent and Plant Patents. Various similarities and differences of each are presented below.
Plant Variety Protection Certificates
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Plant Types Covered
- Applies to sexually (seed) reproduced plants, tuber propagated plants and F1 hybrids. The variety must be uniform, stable, and distinct from all other varieties. Fungi, bacteria, and first generation hybrids are excluded
- Example: turfgrass seed
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Protection Granted
- PVP is granted by the USDA, NOT the USPTO, and the protection covers a single variety and essentially derived varieties.
- In a Patent, claims define the “metes and bounds” of the invention. PVP Certificates have no claims.
- Grants exclusive rights to exclude others from selling the variety, or offering it for sale, or reproducing it, or importing it, or exporting the variety.
- There are two exemptions to the rights granted. One exists to allow farmers to save seed for use on their own farm or to sell it to their neighbors. Recent court decisions have defined who is a “farmer” and how much seed can be saved. Another exemption allows research to be conducted using the variety.
- The term of protection runs 18 years from the certificate’s date of issue, or 25 years in the case of a tree or vine.
USPTO Plant Patents under 35 U.S.C. 161
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Plant Types Covered
- Applies to asexually reproduced plants (buds and cuttings)
- Example: roses
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Protection Granted
- Claims define the “metes and bounds” of the invention.
- Plant Patents have only one claim.
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Plant Patent Infringement
- Plant patent holder has the right to exclude others from asexually reproducing the plant, and from using, offering for sale, or selling the plant so reproduced, or any of its parts, throughout the United States, or from importing the plant so reproduced, or any parts thereof, into the United States. However, Plant Patent holders cannot exclude others from using their patented varieties in breeding programs.
- The term for a Patent is now 20 years from initial filing.
USPTO Utility Patent under 35 U.S.C. 101
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Plant Types Covered
- Sexually reproducing plants (flowers and seeds) and genetically engineered plants
- Example Cotton seed
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Protection Granted
- Claims define the “metes and bounds” of the invention.
- Utility Patents have multiple claims.
- Utility Patent protection can be broader: seed deposit claims, trait claims, breeding methods, food product claims.
- Trait claims cover those varieties developed and disclosed in the patent application without need for seed deposit and cover those varieties independently developed later that fall within the claim.
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Utility Patent Infringement
- A patent holder may prevent others from making, using, selling, offering for sale or importing the claimed invention.
- Furthermore – and a significant difference between Utility and Plant Patents – there is no research exception for [Utility] patented varieties: patent holder can prevent other breeders from using a patented variety in breeding
- The term for a Utility Patent is now 20 years.
In summary, PVP Certificates and Utility Patents apply to sexually reproduced plants whereas Plant Patents apply to asexually reproduced plants. PVP Certificates are much less expensive than Utility Patents however they provide much less protection for the breeder and only last for 18 years as opposed to the 20 year statute for patents. While there is some overlap between the types of protection available for certain plants, where possible protection for both the asexually propagated stable plant and the stable parents that produced the F1 and thus that trio of plants (parents and F1 having a stably reproduced phenotype) should be the subject matter of both types of patent protection. Utility Patents are more common for hybridized and engineered seed crops (namely commodity crops, of which Cannabis could be considered one) whereas Plant Patents are the predominant choice for ornamental turf and plant varieties that are propagated by cutting or buds.
What is a Utility patent? (Material from USPTO website in italicized font)
A Utility patent is issued for the invention of a new and useful process, machine, manufacture, or composition of matter, or a new and useful improvement thereof, it generally permits its owner to exclude others from making, using, or selling the invention for a period of up to twenty years from the date of patent application filing.
The word “process” is defined by law as a process, act, or method, and primarily includes industrial or technical processes. The term “machine” used in the statute needs no explanation. The term “manufacture” refers to articles that are made, and includes all manufactured articles. The term “composition of matter” relates to chemical compositions and may include mixtures of ingredients as well as new chemical compounds. These classes of subject matter taken together include practically everything that is made by man and the processes for making the products.
A uniquely bred strain, having a property that was significantly altered, and could be shown to have utility due to that uniquely bred property, and which reproduces sexually (involving seed and flower) can be can be considered both a process (the act of breeding the unique properties) and manufacture (an article that is made, that is the specific breeding leading to the plant being protected). It might be a stretch, but a uniquely bred strain, if it could be shown to have a specific unique chemical composition (think entourage) might even fall under composition of matter. An example of a utility patent issued by the USPTO on a cannabis plant is US9,095,554.
What is a plant patent? (Material from USPTO website in italicized font with highlighting or underlining added by Steep Hill)
A plant patent is granted by the Government to an inventor (or the inventor’s heirs or assigns) who has invented or discovered and asexually reproduced a distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state. The grant, which lasts for 20 years from the date of filing the application, protects the inventor’s right to exclude others from asexually reproducing, selling, or using the plant so reproduced. This protection is limited to a plant in its ordinary meaning:
A living plant organism which expresses a set of characteristics determined by its single, genetic makeup or genotype , which can be duplicated through asexual reproduction, but which cannot otherwise be “made” or “manufactured.”
Sports, mutants, hybrids , and transformed plants are comprehended; sports or mutants may be spontaneous or induced. Hybrids may be natural, from a planned breeding program, or somatic in source . While natural plant mutants might have naturally occurred, they must have been discovered in a cultivated area.
Algae and macro fungi are regarded as plants, but bacteria are not.
The information presented in this section is tailored to apply to and is limited to patents on asexually reproduced plants.
Asexually reproduced plants and asexual reproduction applies to the cannabis industry wide practice of distributing clones of stabile phenotypes (i.e., a set of characteristics determined by the plants genetic makeup, otherwise known as genotype) to growers and dispensaries. It would be safe to say that all newly developed strains are hybrids to some degree, as breeding typically involves combining distinct phenotypes to produce new offspring with different traits or at least different combinations of traits than either parent possessed.
Additional requirements that need to be met for plant patents, include (material from USPTO website in italicized font);
That the plant is not a plant which is excluded by statute, where the part of the plant used for asexual reproduction is not a tuber food part, as with potato or Jerusalem artichoke.
That the person or persons filing the application are those who actually invented the claimed plant; i.e., discovered or developed and identified or isolated the plant, and asexually reproduced the plant.
That the plant has not been sold or released in the United States of America more than one year prior to the date of the application.
That the plant has not been enabled to the public, i.e., by description in a printed publication in this country more than one year before the application for patent with an offer to sale; or by release or sale of the plant more than one year prior to application for patent.
That the plant be shown to differ from known, related plants by at least one distinguishing characteristic, which is more than a difference caused by growing conditions or fertility levels, etc.
The invention would not have been obvious to one skilled in the art at the time of invention by applicant.
What rights or protection are afforded by plant patents? (Material from USPTO website in italicized font with highlighting or underlining added by Steep Hill)
Grant of a patent for a plant precludes others from asexually reproducing or selling or using the patented plant. A plant patent is regarded as limited to one plant, or genome. A sport or mutant of a patented plant would not be considered to be of the same genotype, would not be covered by the plant patent to the parent plant, and would, itself, be separately patentable, subject to meeting the requirements of patentability. A plant patent expires 20 years from the filing date of the patent application. As with utility applications, when the plant patent expires, the subject matter of the patent becomes public domain.
How do you go about getting a plant patent, and what information is required to support a plant patent? A plant patent is a formal application to the United States Patent and Trademark (USPTO) which includes a description of the unique characteristics of the plant that are tied to the genetic makeup or genotype of the plant as well as growing characteristics and any other detailed information that can be used to distinguish the plant to be patented from other similar plants. Color pictures or drawings of the plant often are required, particularly if color or a specific physical trait are part of what are being claimed as being a unique, distinguishing characteristic. More detailed information is provided below using information provided from the USPTO. (Material from USPTO website in italicized font with highlighting or underlining added by Steep Hill)
Title 37 of the Code of Federal Regulations, Section 1.163(a)) requires that the specification must contain as full and complete a botanical description as reasonably possible of the plant and the characteristics which distinguish that plant over known, related plants. The components of a plant application are similar to those of a utility application.
Among the factors which must be ascertained for a reasonably complete botanical description for the claimed plant are:
Genus and species
Habit of growth
Cultivar name
Vigor
Productivity
Precocity (if applicable)
Botanical characteristics of plant structures (i.e. buds, bark, foliage, flowers, fruit, etc.)
Fertility (Fecundity)
Other characteristics which distinguish the plant such as resistance(s) to disease, drought, cold, dampness, etc., fragrance, coloration, regularity and time of bearing, quantity or quality of extracts, rooting ability, timing or duration of flowering season, etc.
The amount of detail required in a plant patent application is determined on a case-by-case basis, and is determined by the similarity of the prior art plants to the plant being claimed . The examiner will evaluate the completeness of the application. The examiner’s judgment may be tempered by the level of activity in a specific market class. The botanical description of a plant in a market class with a high level of commercial activity may require greater detail, substance and specificity than that for a plant in a market class of little activity.
The highlighting and underlining applied to the above paragraph by Steep Hill is explained here. First sentence in bold; basically this means that as more cannabis plant patents are issued, the more detail to distinguish between the strains will be required. Prior art plants means, for this purpose, any previously filed hemp/cannabis plant patent applications or issued plant patents. What does that mean to you? The sooner you decide to file on your unique strain, the better, as you’ll have fewer “prior art plants” to contend with, which THEORETICALLY should make the process easier early on, as compared to after hundreds have been filed. The sentence referring to “The examiner’s judgement…” expect the judgement level to be high and the examination to be tough until public policy and government attitudes change. Every early cannabis application is likely to be thoroughly scrutinized so be as thorough as possible when making your observations and recording the information required for the application. The last bolded sentence in the above paragraph is pretty self-explanatory, expect a LOT of activity in this market class. More from the USPTO website below in italics, with highlighting or underlining added by Steep Hill. The rest of what we’ve included for you is a description of what will be expected and how to go about getting what you need for a complete plant patent application.
While background information for specific classes of plants may be readily available, one seeking to file a plant patent application should be thoroughly familiar with the characteristics of the plant, and must assure that the plant is stable. Invention for purposes of a plant patent is a two step process:
The first step is the discovery step which involves the identification of a novel plant. This step could be performed in any cultivated area. It could involve the identification or recognition of an off-type plant in a monoculture of a known variety or the identification of a desirable mutant which was either spontaneous or induced. Or, it could result from the identification or recognition of an outstanding individual within the progeny of a cross made in a planned breeding program.
The second step, which consists of asexual reproduction, tests the stability of the claimed plant to assure that the plant’s unique characteristics are not due to disease, infection, or exposure to agents which cause a change in the plant’s appearance which is transitory and not due to a change in the genotype of the plant.
It is important that each of the above steps is satisfied before an application is filed . The inventor of a plant must have discovered or identified the novel plant, and must have asexually reproduced the plant and observed the clones so produced for a sufficient amount of time to have concluded that the clones are identical to the parent plant in all characteristics. It would be inappropriate to file an application before the second step of invention had been completed. Filing of an application before the second step of invention has been completed will result in rejection of the claim as being premature and nonstatutory.
Before an application is filed, the (clones of the) plant must have been carefully observed during the testing process. Because the botanical description of the plant must be reasonably complete, it would not suffice to describe just the fruit, or flower, or bark, or leaves of any specific plant, even if these plant parts were the valuable substance of the plant in commerce or the only parts seem to be distinctive or different. It would be inappropriate to describe just the bark, roots and juvenile growth of a rootstock, even if only these parts would normally would be seen by or important to the consumer who was to purchase the plant.
In preparation of a plant patent disclosure, all parts of the plant should be carefully observed through at least one growth cycle and such observations should be recorded in detail. Because many plants (like pine trees of the same species, asparagus plants, bluegrass plants, etc.) may look very similar, it may take the collective differences in a number of traits to distinguish a new cultivar. Failure to record characteristics and differences at their time of availability in the growing season could result in applicant not being able to adequately botanically describe the claimed plant when the specification is drafted . Incomplete records of a claimed plant may render it impossible to overcome defects identified in an examiner’s rejection or at the very least prolong prosecution of the application.
This last bolded and underlined part is REALLY REALLY important. It means that the differences that you can use to establish the differences between your strain and “prior art strains” can be found at ANY TIME. From seed to flowering… SO BE OBSERVANT THROUGH THE WHOLE GROW CYCLE!
We at Steep Hill hope you find this information useful. Remember we aren’t providing any legal opinions here. We are just pointing out what is needed for you to start down the road to protecting all the time and effort you put in to developing that new and unique strain. And as usual, Steep Hill is here to help you with the best science available to accomplish that goal . We’d also recommend finding a patent lawyer, or law firm that has experience with filing and prosecuting plant patents.
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I actually have been pretty vocal about this, and unfortunately we didn’t speak or at least speak on this topic. This was a personal quest of mine at one point, but when no one seemed interested in listening or worse, said that I was just trying to drum up business, I stopped speaking about it. As I said, I don’t breed, Steep Hill doesn’t breed or cultivate, we test. We consult with the tools we’ve built for the industry, and because of my additional IP background I saw there were problems down the road, but it wasn’t really my battle. After giving the information to various sectors of the industry, and watching not a lot happen, there wasn’t much i could do, but I did hope to help by joining OCP, and releasing our data to the public after publication in scientific journals.
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Perhaps not all the staff at Phylos were fully aware about what they were being part of… maybe they were a bit naive…
Several people including us have been provided with an investors pitch deck from Phylos a while back. It is 3 years old. Their strategy was already very clear and consistent with today’s coming out = acquiring a monopolistic position in cannabis breeding to later maximize the price of acquisition by a biotech company…
@Growernick there are not too many questions to ask to Phylos via an AMA if you ask me… it’s very clear to many people. Mowgli Holmes makes it fully explicit in his 17-minute presentation on stage… they are lined up to sell out cannabis genetics to Big Ag… not meant to dramatize the situation, simply factual.
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The only people to mention what? that Phylos was doing what they were doing, or that there was a problem with the industry that started with IP. Cause I WAS the first one to say anything about the IP issue and the Biotech Institute LLC patents. As far as Phylos, no, I didn’t say anything about what they were doing as I didn’t know and I wasn’t really paying attention to them as I was trying to build our own business.
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They were not the first to do an end around on the industry. The biotech Institute LLC patents did that first. While the industry focused on rescheduling, they were patenting… strains that they didn’t even breed.
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We positively do NOT have a breeding program. If you look at our record, you will see we are dedicated to sharing our insights with the community and developing DNA-based testing tools for all breeders. Our CSO, Kevin McKernan, was one of the first to alert the market that other players had ulterior motives, and he was chided for it. He’s feeling very validated these days, as you may have seen on his IG account.
We submit all the genetic info we generate with our StrainSEEK service to the blockchain where it can’t be altered or removed. We assembled the most comprehensive cannabis genome, Jamaican Lion and made it public for the industry to use. Many top breeders and researchers are using that reference to develop some amazing technologies. We built a DIY genetic testing platform, youPCR, so growers aren’t required to send us samples or enter into exclusive partnerships. Our solutions are available to all.
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We also are using the JL sequence that MG put up. It’s made all of our work much much easier. MG and SH have been sharing ideas and resources. So, hopefully the industry realizes that there are still options for this type of R&D and that there are many levels of adoption of these methods, from the DIY kits that MG produces and marker assisted breeding to full breeding program consulting services which include partial or full genome analysis, wihich both companies offer.
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This is the kind of tech that could help shape our industry and regain the trust of growers worldwide. Thanks for chiming in @BenMGC and @reggie!
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Let’s build another GN poll on this topic since this is a great leaning experience for our burgeoning industry. Can Phylos earn back your trust as a consumer? Would you be willing to share data with Phylos again in the future if they updated their corporate practices to reflect a greater degree of transparency? Would you be willing to work with another company offering similar services?
- I would be willing to trust Phylos if they changed their ways
- No way. Phylos has damaged my consumer confidence beyond repair
- I would be willing to work with another genomic screening company in the future
0 voters
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@reggie , as a member of Open Cannabis Project, what do you think about the fact that this nonprofit was initially incepted by Phylos as a complementary data acquisition channel for varietals they wouldn’t be testing themselves (including tests results from SH or MG…) ??
I believe a lot of us also want to know who are the main funders/donors of Open Cannabis Project. Many people have been asking whether OCP was actually the Public Relations arm of Phylos and Big Ag…
@beth you are welcome to chime in.
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I joined OCP because I believed in the concept as a way to protect against what I saw as a Big Ag, Big Pharma threat. Mowgli asked me to join the project based on that, and as we are academically oriented, we would publish the data, which requires it be made public, so it was completely logical for Steep Hill to donate the data to OCP. So, it is possible that they would have used some of our data for their purposes, sure. I can’t prove it, but i use publicly available data all the time, from NCBI. Phylos could have accessed my data there anyway. The purpose of academic research is to donate the information to Science for everyone to benefit from that knowledge and further additional research.
We have mined our data and built tools that we are in the process of protecting, but again, it’s protecting the tools for marker assisted breeding, methods of identifying specific targets, not the targets themselves or the plants.
As a board member of OCP, I am in fact involved in discussion about what OCP’s response to this turn of events will be. But I am not authorized to speak, @beth, the director will. But I will say we have been discussing this since before this disclosure, as we had learned of the announcement of their partnership with a breeding company earlier this year.
OCP is acutely aware of the optics and are actually now completely separate from Phylos. OCP had already been discussing how we could better serve the community.
As for funding, OCP is horribly underfunded, and @beth, being the saint she is, actually has been running OCP, and trying to raise funds for OCP, without getting paid some months. OCP takes donations from people in the industry, and I am not sure legally if that is appropriate but @beth can determine if we could give out the fairly short list. Or, if anyone on this forum has donated to OCP, please feel free to identify yourselves. I have personally donated about $200 or so dollars and if I had more personal wealth I’d donate more, cause @beth does a ton of work, and doesn’t get paid regularly.
my response to the part about public relations arm of Phylos and Big Ag is; I’m on the board of OCP, I’m the president and director of genetics and R&D at a separate company offering both chemical and genetics analytical services, and i’m pretty vocal, about my position. My company was the first commercial, cannabis testing company in the USA and possibly the world. So if that’s really anyone’s opinion, they aren’t paying attention.
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Absolutely agree. I stopped engaging with people in the industry because I’m too excited about the products I’m developing and the revenue streams I’ve discovered that I talk too much. I’ve been stolen from, stabbed in the back, because I make a friking excellent product and taught a few others how-to and some of those are too greedy to consume their own space. I’ve been researching and engaging with the top scientist in cannabis for over ten years, so my data set is extremely valuable and people pay high dollars for my consultations. BUT I have over 12 pages of documents covering my IP that is signed with the NDA. I stay engaged with my consulting companies to pay attention to what they are doing with my IP. Our sales guy told me the other day, “The biggest cause of failure in cannabis is lack of follow-through.” Be like Ah Warner of Cannabis Basics, send a cease and desist to any company that violates your agreement with them. She’s fighting High Times right now over Women of Weed. Theft of other people’s work is rampant in cannabis. Just heard the organizing gal from Bham BudFest exclaim how she loved the saying, “good artist create, great artist steal.”
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I’m currently working on a webinar with one of our clients that has been using youPCR to seriously accelerate their breeding program. I will definitely share the details with the GN community once they are finalized!
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We will look forward to that info and learning more about the youPCR screening MG offers.
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Here’s what Kevin Jodrey has to say on the subject
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