Can you patent a strawberry? DRISCOLLS v. CBC

Can you patent a strawberry? DRISCOLLS v. CBC

A patent is a set of exclusive rights granted to the inventor of a new invention.  When people think of patents they typically think of machines or devices that perform a task.  However, inventors of new varieties of plants can also be granted a patent on their creations.

A plant patent is granted by the United States 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 patent owner’s 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 part thereof, into the United States. 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 cannot otherwise be “made” or “manufactured.”

Patents to plants, which are stable and reproduced by asexual reproduction, and not a potato or other edible tuber reproduced plant, are provided for by Title 35 United States Code, Section 161.  A plant patent grants its owner the exclusive right to asexually reproduce the plant, and 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.

A case which illustrates the owner of a plant patent enforcing its rights is DRISCOLL’S, INC., v. CALIFORNIA BERRY CULTIVARS, LLC,  2:19-cv-00493 (E.D.CA 2019).  The plaintiff in this case  began as the Strawberry Institute of California, a private breeding program that received the first patent on a strawberry variety in 1958. To this day, Driscoll’s continues to breed new berry varieties through traditional plant breeding techniques. These proprietary varieties are available only to Driscoll’s independent farmer growers through a license from Driscoll’s. The license does not allow farmers to use Driscoll’s strawberries in a breeding program.  The farmers grow the fruit to meet Driscoll’s rigorous quality specifications. The fruit is then sold exclusively by Driscoll’s, with Driscoll’s packaging and under the Driscoll’s brand.

The defendant in this case is a former professor of the University of California at Davis, where he ran the University’s strawberry breeding program.  The defendant left the University in 2014 and established California Berry Cultivators (CBC), a private strawberry breeding company. The defendant took several varieties of strawberries with him when he left the University.  In May 2017 a jury found the defendant guilty of willful patent infringement by using eleven of the University’s patented varieties in CBC’s breeding program without the University’s permission. During that trial, witness testimony and exhibits publicly revealed that CBC had improperly used not only the University’s proprietary strawberry varieties, but also strawberry varieties which are proprietary to Driscoll. The evidence in the University’s lawsuit demonstrated that at least four of the Driscoll’s patented strawberries were used in CBC’s breeding program.

Driscoll sued CBC for patent infringement and violation of Driscoll’s license to use the strawberries in a breeding program.  This case raises an interesting question of whether the license restriction against use in a breeding program is enforceable.  A United States plant patent does not prevent a patented plant from being used in a breeding program, and only protects the asexual reproduction of a plant.  Driscoll is trying to use contract law to restrict use of its plant varieties in breeding programs to reach beyond what a plant patent protects.  However, this may be a moot point because the complaint also alleges that CBC infringed on Driscoll’s plant patents by asexually reproducing the plants.  Given the fact that the defendant already lost a case for plant patent infringement, it is unlikely the present case will go well for the defendant.

If you have questions or comments for the authors of this blog please email us at: