Agriculture and Agri-Food Canada (AAFC) has regained patent protection for the Staccato cherry in the United States after a federal court reinstated its U.S. patent, reversing an earlier invalidation. The case highlights the importance of securing and enforcing intellectual property rights for plant varieties in export markets.
The Staccato cherry was first discovered in 1982 by an AAFC breeder in Summerland, British Columbia. Its late-ripening trait allows harvests into early August, providing growers with a marketing window when supply is typically lower. To safeguard the variety, AAFC applied for U.S. patent protection under Plant Patent No. 20,551, in addition to Canadian protections, given the commercial importance of the U.S. cherry market.
The legal dispute began when a licensed grower in Washington State, under a restricted testing agreement, inadvertently provided a Staccato tree to another farmer. Believing it to be a new variety, the farmer propagated and marketed it as "Glory," eventually securing U.S. Plant Patent No. 22,693. Canada then initiated infringement claims in the case Her Majesty the Queen in Right of Canada v. Van Well Nursery, Inc., to enforce its rights.
Although genetic testing confirmed that Glory and Staccato were identical, a U.S. court initially invalidated AAFC's patent based on evidence suggesting sales of the variety had occurred before the filing date. However, the court later acknowledged that the sales data had been misrepresented and involved another variety. The judge ruled that defendants had "falsely represented" the evidence and reinstated the Staccato patent.
This outcome confirms that Canadian-developed plant varieties can be protected under the U.S. legal framework. It also highlights the importance of rigorous licensing agreements and monitoring to prevent unauthorized propagation.
In Canada, plant varieties can be protected under the Plant Breeders' Rights Act if they are new, distinct, uniform, and stable. In the United States, similar protections exist under the Plant Variety Protection Act, granting breeders exclusive rights over new varieties of sexually reproduced, tuber-propagated, and asexually reproduced plants.
The ruling underscores that a multi-pronged approach is needed when commercializing new plant varieties. This includes securing formal intellectual property protections such as patents or plant variety rights, while also ensuring that testing and licensing agreements contain adequate safeguards against misuse.
Source: Fasken
