Patent protection of new biofuel plant varieties
High yielding biofuel crops with increased conversion efficiency can reduce the acreage needed for cultivation and reduce their competition with food crops. It goes without saying that companies that develop new plant varieties for making biofuels should seek patent protection. Similar rationale applies for crops developed for biomaterial production.
A challenge with patenting new plant strains in Canada is that plants are not considered eligible subject matter for patenting. However, with a little knowledge of patent laws, it is still possible to leverage and maximize your patent rights for new plant varieties in Canada.
Limitations with Plant Breeders’ Rights
One avenue to protect new plant varieties in Canada is the Canadian Plant Breeders’ Rights Act (PBRA). The PBRA protects varieties of plants that are new and stable. However, there are a number of limitations inherent with plant breeders’ rights. For instance, rights available under the PBRA are limited to the plant variety itself. They do not prevent the development of different varieties from protected plants or the use of seeds taken from protected varieties. By contrast, patent rights are more expansive in scope. A patent right is typically not limited to a single commercial embodiment of the invention, but includes equivalent and analogous features that fall within the scope of protection defined by the patent. In addition, different aspects of an invention can also be protected by a patent, such as a product and a process for making the product. Thus, patents are clearly the preferred form of intellectual property protection. The inability to obtain a patent to a plant is a major shortcoming in Canada.
Nonetheless, there are a number of work-arounds available to obtain patent rights that are akin to obtaining a patent to the plant itself as discussed below.
The Supreme Court decision of Harvard Mouse confirmed that cells can be patented. In addition, a patent to a plant cell itself can be enforceable against a competitor that makes, uses or sells the plant. In the Supreme Court decision of Schmeiser, a patent covering cells was not considered limited to the cells in isolation in the laboratory. In other words, patent protection extended to the plants themselves, since they necessarily contain the cells. According to Schmeiser, making using and selling a plant that contains a patented cell constitutes infringement of a patent directed to the cell.
Is your new plant variety produced by a genetic modification? If so, it is important to explore whether the genetic material itself can be patented. Similar to cells, if a patent claims genetic material, the scope of protection includes not only the genetic material isolated in the lab, but also that which is contained within the plants. Examples of genetic material that can be patented include modified genes, isolated genes (in some instances), and DNA vectors used in cloning. In addition, proteins, amino acid sequences, and recombinant techniques for producing the plant can be the subject of a patent.
Non-traditional breeding methods
Traditional plant breeding techniques are not patentable in Canada. However, if plant breeding integrates a non-traditional method step (biotechnological step) to produce the plant variety, then the method as a whole might be considered patentable. Thus, it is important to explore whether the method for making the plant variety can be the subject of a patent, even if traditional plant breeding was involved.
Patent rights and plant breeders’ rights are not mutually exclusive
Finally, it is important to appreciate that plant breeders’ rights and patent rights can be attained for the same invention. Even if you have already filed a patent application, you might consider also pursuing protection for your new plant variety under the PBRA to maximize the rights available under different statutory regimes.
We can help
Patenting technology related to plant varieties requires detailed knowledge of IP laws. The particular strategy you adopt depends on the unique set of facts at play. The foregoing does not constitute legal advice, but rather discusses at a high level some of the issues that might arise. If you require advice on a particular issue, you can contact a member of our IP group and we would be happy to help.
 Pioneer Hi-Bred Ltd. v. Canada (Commissioner of Patents),  1 S.C.R. 1623.
 Harvard College v. Canada (Commissioner of Patents),  4 S.C.R. 45, 2002 SCC 76 at para 61.
 Note, however, that the Patent Office rejects claims to cells that specifically state that the cell is part of a plant. See Manual of Patent Office Practice (MOPOP), section 17.02.01.
 Monsanto Canada Inc. v. Schmeiser,  1 S.C.R. 902, 2004 SCC 34 at para 17, stating the following:
Everyone agrees that Monsanto did not claim protection for the genetically modified plant itself, but rather for the genes and the modified cells that make up the plant. Unlike our colleague, Arbour J., we do not believe this fact requires reading a proviso into the claims that would provide patent protection to the genes and cells only when in an isolated laboratory form.
 Ibid at para 81.