What Happenes When A Plant Patent Expires? Growers May Still Need To Be Careful To Avoid IP Infringement
By Stephany G. Small, Ph.D. and Travis W. Bliss, Ph.D., J.D.
A U.S. plant patent grants the patent holder the right to exclude others from asexually reproducing, using, offering for sale, or selling the patented plant or any of its parts in the United States or importing them into the Uniteds States. Twenty years after filing the plant patent application, the plant patent will expire, thus placing the variety in the public domain. However, the expiration of the plant patent does not necessarily mean that the public gains completely free use of the off-patent variety without any restrictions.
Once the plant patent expires, anyone can start selling the plant without needing a license from the patent holder, right? Sort of, but not exactly.
Although selling plants of a previously patented variety is permissible once the patent expires, one cannot propagate the variety (without an appropriate license from the patent holder) until after the patent expires. Any propagation of a patented variety prior to the expiration of the patent is an act of infringement, even if those propagated plants are not sold until after the patent expires. Thus, selling plants of an off-patent variety immediately after the patent expires is often not permissible (unless you had a license) because the act of propagation still constitutes patent infringement if it was done when the patent was in force.
For example, ‘Radrazz’ is a shrub rose plant variety that is protected by a U.S. plant patent that expired on January 13, 2019. Until that date, it was not permissible to propagate ‘Radrazz’ rose plants without a license from the patent holder. So it would be an act of infringement for an unlicensed propagator to sell ‘Radrazz’ plants on January 14, 2019, because any plant sold on January 14, 2019, was necessarily propagated prior to the expiration of the patent. However, it would likely be permissible to start propagating ‘Radrazz’ plants on January 14, 2019, and to post an advertisement on that day offering the sale of those newly propagated plants at a later date.
If you are the patent holder, it should also be noted that this type of infringing act is quite easy to detect for many types of plants. If a grower starts selling plants of your off-patent variety and you can tell by the size of those plants that they must have been propagated before the patent expired, then you likely have an act of infringement that would at very least warrant a discussion with that potential infringer.
Once the patent expires, anyone can sell the plants under the same name, right? Again, sort of, but not exactly.
Despite the fact that the plant patent has expired, other intellectual property protections may exist that can create continued restrictions on the sale of plants of that off-patent variety. Notably, there may be ongoing trademark protection, which will dictate how the variety can be sold and marketed. A federal trademark registration can be renewed indefinitely. Thus, while a patent expires after 20 years, federal trademark protection can last in perpetuity. If trademark protection still exists on the tradename under which the plant is sold, then use of the well-known trademark name of that plant may not be permissible.
Using the ‘Radrazz’ rose as an example again, the ‘Radrazz’ name is the official variety denomination that was given to this variety in the U.S. plant patent application. As such, ‘Radrazz’ is not, and cannot be, a trademark name for the variety. Instead, ‘Radrazz’ is the official, generic name of this plant variety. As such, after the ‘Radrazz’ plant patent expires, anyone should be free to sell ‘Radrazz’ rose plants under the ‘Radrazz’ name in the U.S.
However, the ‘Radrazz’ rose is not just marketed under its variety denomination. Instead, it is also marketed under the brand name KNOCK OUT®, which is a federally registered trademark that is also owned by the patent holder. Because the expiration of the ‘Radrazz’ plant patent will have no impact on the status of the KNOCK OUT® trademark, even after the patent expires, it would still be an act of trademark infringement to refer to the ‘Radrazz’ plant that you are selling as a KNOCK OUT® rose (without first obtaining a license to do so from the trademark owner). Similarly, it may be an act of trademark infringement to utilize the typical KNOCK OUT® trade dress, such as the signature green pot, when selling this variety without an appropriate license from the trademark owner. To avoid these potential trademark infringement issues, an unlicensed seller could sell the variety under the variety denomination ‘Radrazz’ and in a non-trade dress pot, such as a black pot.
Having this type of “two-layered” protection around a variety is not unique to the ‘Radrazz’ rose. For example, the ‘Cripps Pink’ apple, which is now off-patent, was and continues to be sold under the trademark name PINK LADY®. And the same scenario occurs outside of the realm of horticulture, as well. For example, Johnson & Johnson Corp. owns the registered trademark name TYLENOL® for the off-patent drug acetaminophen. So while non-licensees are able to sell these off-patent products under the generic names (‘Cripps Pink’ and acetaminophen), they cannot sell the products under the trademark names (PINK LADY® and TYLENOL®) without obtaining an appropriate license to do so.
However, not every patented plant variety has this type of “two-layered” protection. As one example, the ‘Honeycrisp’ apple was protected by a U.S. plant patent, but the variety denomination in the plant patent was indeed ‘Honeycrisp’. As such, the ‘Honeycrisp’ name never had any federal trademark protection around it. Thus, upon expiration of the ‘Honeycrisp’ plant patent, anyone would likely be free to begin growing and selling ‘Honeycrisp’ trees under that name.
As this illustrates, the expiration of a U.S. plant patent does not necessarily mean that anyone can immediately begin propagating, using, offering for sale, or selling the off-patent variety without any restrictions. Certain activities can, and often are, still restricted. As such, growers should take care to ensure that they are not infringing any valid intellectual property rights when beginning to propagate, grow, and sell an off-patent variety in order to avoid the possibility of intellectual property enforcement actions by the owner. As the saying goes “an ounce of prevention is worth a pound of cure.”