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This article briefly introduces the common problems in patent applications in the field of crop breeding technology, and provides reference methods to avoid or solve them, so as to improve the quality of drafting patent applications in the field of crop breeding technology. ”
来源:IPRdaily中文网(iprdaily.cn)
Author: Cao Jiatai, Beijing Gaowo Law Firm
Background technology
In 2021, the Intellectual Property Development Research Center of the State Intellectual Property Office released the report "Research Results on Patent Navigation in the Biological Breeding Industry", which shows that the number of patent applications in the field of biological breeding in the world is growing rapidly, and the number of patent applications for biological breeding in mainland China ranks first in the world. According to the report, Beijing, Jiangsu, and Guangdong rank among the top domestic biological breeding patent applications, and the top 10 domestic applicants are universities and research institutions. However, whether it is in the field of biological breeding technology or in the field of traditional breeding technology, there are common problems of emphasizing papers and inventions, emphasizing quantity, quality, results and application, resulting in uneven quality of application documents in the field of crop breeding technology when applying for patents, making it difficult to grant or even reject patent applications.
This paper briefly introduces the common problems in patent applications in the field of crop breeding technology, and provides reference methods to avoid or solve them, so as to improve the quality of drafting patent applications in the field of crop breeding technology.
Frequently Asked Questions 1
Law 25.1: Plant varieties that are not subject matter for which a patent is not granted
Cultivating new plant varieties with excellent traits is a common breeding goal in crop breeding, and it is also a technical problem to be solved by patent application in the field of crop breeding technology. However, Article 25.1.4 of the Patent Law stipulates that plant varieties cannot be patented, which also means that new plant varieties that have been painstakingly cultivated cannot be protected by patent rights. The term "plant" in the Patent Law refers to organisms that can survive with the help of photosynthesis and the synthesis of carbohydrates and proteins from inorganic substances such as water, carbon dioxide and inorganic salts, and usually do not move, such as seeds, fruits, callus, etc.
Related cases: CN200910247168.1 disclosed a new variety of coriander, claim 1 claimed protection of a spherical seed of coriander, CN200910246636.3 disclosed a new variety of long cowpea plant, claim 1 claimed protection of a cowpea with a pod length of more than 90 cm and a tea-red seed, CN201510299836.0 disclosed a new variety of large cherry, claim 1 claimed protection of a black cherry. The claims in the above-mentioned cases all claim protection for the cultivated new plant varieties, and it is clear that they all fall under the circumstances stipulated in Article 25.1.4 of the Patent Law, and cannot be granted a patent.
Circumventions
(1) When drafting claims, new plant varieties should not be protected, i.e., product-type claims should not be drafted with the theme of plant varieties (such as names, numbers, etc.);
Related cases: CN201310582298.7 disclosed the invention patent application of "tissue culture method, fern culture method and plant culture", in which claim 12 claimed protection of a plant culture, the applicant deleted claim 12 and dependent claim 13 in the substantive examination stage, and finally obtained authorization on April 27, 2016.
(2) Cultivation methods for protecting new plant varieties.
Related cases: CN202210192492.3 disclosed the invention patent application of "a breeding method for black grain highland barley", and the 1647-7 strain of highland barley cultivated by the invention patent application has the characteristics of black grain and high yield. However, the above-mentioned invention patent application does not require the protection of "1647-7 strain" in the claims, but protects the method-based claim with the theme of "a method for breeding black grain highland barley", which is essentially a requirement for the protection of "method for cultivating 1647-7 strain of highland barley", which was finally granted on January 10, 2023.
(3) Further in-depth development of new plant varieties obtained to obtain protection for other products or methods. For example, wheat varieties with high zinc content obtained by cultivation are developed into high value-added products such as high-zinc bread and applied for patents, and drought-resistant saline-alkali tree varieties obtained by cultivation are developed into saline-alkali desertification improvement methods for patent applications.
Related cases: CN202110542635.4 disclosed the invention patent application of "rose wine prepared from a new rose variety", and the specification of the invention patent application pointed out that the new rose variety obtained by crossing Yunnan Plateau rose and Yunnan Snow Mountain rose has a purple-red and transparent appearance, mellow aroma, However, the invention patent application does not require the protection of the above-mentioned new rose varieties, but the new rose varieties cultivated have been deeply developed and prepared into rose wine in the form of raw materials, which can improve the taste of conventional rose wine and endow it with antioxidant activity. Although the above-mentioned invention patent application was not authorized in the end, it avoided the problem that the hybrid offspring varieties of "Yunnan Plateau Rose ×Yunnan Snow Mountain Rose" could not be protected by patent rights.
(4) New plant varieties obtained through cultivation can also be protected by other laws and regulations other than the Patent Law, such as through the Regulations on the Protection of New Plant Varieties.
Related cases: Zhengdan 958, the corn variety with the largest planting area, was granted the national protection of new plant varieties in January 2001 through the Regulations on the Protection of New Plant Varieties, and the variety right number was CNA20000053.5.
FAQ 2
Act 22.4: Practicality
According to the provisions of Article 25, Paragraph 2 of the Patent Law, a patent may be granted for the production method of a plant variety. In recent years, the use of gene mutation has developed rapidly in breeding practice, and mutagenesis breeding through artificial induced mutation can increase the frequency of mutation, create new traits that are not found in nature, break the close linkage between genes, and promote gene recombination.
However, Article 22.4 of the Patent Law stipulates that an invention or utility model can be manufactured or used and can produce positive effects. The Guidelines for Patent Examination also explain that the subject matter of a patent application for invention that is practical should be reproducible, and conversely, an invention without reproducibility is not practical. The so-called reproducibility means that a person skilled in the said technical art is able to repeatedly implement the technical solution used in the patent application to solve the technical problem according to the disclosed technical content, and such repeated implementation shall not rely on any random factors, and the result of the implementation shall be the same. Obviously, due to the problems of mutation breeding, such as the difficulty in effectively controlling the nature and direction of mutation induced, that is, the mutation process is aimless, and the mutation results are uncertain and random, most of the patent applications with mutagenesis breeding as the main technical solution are not reproducible and cannot be applied in the industry, which does not comply with the provisions of Article 22, Paragraph 4 of the Patent Law on practicability.
Related cases: CN201810754958.8 disclosed the invention patent application of "an EMS mutagen in the creation of short-leaved -13 radish sterile line", the invention patent application obtained the radish male sterile line through EMS chemical mutagenesis, and the claim claims protect the application and creation method of EMS in the creation of radish sterile line. Obviously, the technical solution of the above-mentioned invention patent application was not reproducible, and was ultimately rejected because it did not comply with the provisions of Article 22.4 of the Patent Law on practicability.
Circumventions
(1) The technical problems solved by the technical solution should be reproducible, that is, they can be applied in the industry. The technical solution should avoid obtaining a plant variety with a specific trait as a technical problem to be solved, and the technical solution that can be implemented repeatedly should be applied for a patent, such as increasing the mutagenesis rate and increasing the proportion of favorable mutants, etc., as the technical problem to be solved, and the claims should be drafted.
Related cases: CN201010521974.6 disclosed the invention patent application of "a method for improving the mutagenesis breeding efficiency of small tung plants", which obtained high yield, high oil and high stress resistance small tung plants through EMS chemical mutagenesis, but the claims did not require the protection of the obtained small tung plants, nor did it require the protection of the creation method of high yield, high oil and high stress resistance of small tung plants, but "improve the mutagenesis breeding efficiency of small tung plants" that can be implemented repeatedly The title was finally granted on May 2, 2012 because of its reproducibility and circumvention of the lack of practicality.
(2) Similarly, further in-depth development of mutation breeding, such as the further development of new varieties of mutant plants to be obtained, and the further development of detection methods and molecular markers in the process of mutagenesis breeding.
Related cases: CN201911335320.1 disclosed the invention patent application of "molecular markers closely linked to dwarf genes and their applications", which was based on the genetic analysis of the maize dwarf mutant (Zheng 58d) obtained by mutagenesis breeding, and the relevant molecular markers and applications were deeply developed, and the invention patent application was carried out, which was finally authorized on April 23, 2021.
FAQ 3
Law 26.3: Clear and complete instructions - Preservation of biological materials
The genetic composition of breeding parents is the material basis of the genes of offspring, which is related to whether the offspring can achieve the breeding goal, therefore, the correct selection of parents is an important part of the breeding method. In the patent application in the field of crop breeding technology, parental materials, special intermediate materials, etc. are the key contents of its technical solutions.
Paragraph 3 of Article 26 of the Patent Law stipulates that the specification shall give a clear and complete description of the invention or utility model, which shall be subject to the realization of the invention by a person skilled in the technical field. However, in some cases, because it is difficult to describe the specific characteristics of the biological materials in the written records, even if the biological materials in the present application are not obtained, the person skilled in the technical art to which they belong still cannot carry out the invention, resulting in the patent application not complying with the provisions of Article 26, Paragraph 3 of the Patent Law, or even leading to rejection.
Related cases: CN201811439686.9 disclosed "a method for creating a new strain of ornamental self-inbred sunflower with high seed setting rate", and the new sunflower strain in the invention patent application mainly relies on parental materials such as FW13201-1 and FW13115-4 through hybridization and backcrossing. However, due to the fact that the application documents of the invention patent application did not give a clear and complete explanation of the above-mentioned parental materials (they are not known biological materials, undisclosed and unpreserved), they were finally rejected because they did not comply with the provisions of Article 26, Paragraph 3 of the Patent Law.
Circumventions
(1) Before drafting a patent, a full search of the prior art shall be conducted to determine that the biological material can be obtained by the public, and the conditions under which the public can obtain it include: (1) the biological material that the public can buy from domestic and foreign commercial channels shall indicate the channel of purchase in the specification, and if necessary, the evidence that the public can purchase the biological material before the filing date (if it has priority, it refers to the priority date); (2) the biological material that has been deposited in a depository institution recognized by the patent office of each country or the International Patent Organization for use in patent proceedings, and has been published or authorized in the patent gazette before the filing date of the patent application filed in mainland China (if it has a priority right, it refers to the priority date). ;(3) If the biological material that must be used in the patent application has been disclosed in the non-patent literature before the filing date (if there is a priority right, it refers to the priority date), the source of the document shall be indicated in the specification, the means for the public to obtain the biological material shall be indicated, and the patent applicant shall provide proof of the guarantee that the biological material will be released to the public within 20 years from the filing date.
Related cases: CN202210192278.8 disclosed "a breeding method for the combination of grain and grass with black grains", and the new variety of highland barley with black grains and grasses applied for by the invention patent was obtained by cross-breeding with "Ganken No. 5" and "ZDM8082" as parents, and the above-mentioned biological materials have been disclosed in non-patent literature before the filing date, that is, they can be obtained by the public, in accordance with the Patent Law Paragraph 3 of Article 26 stipulates that it will finally be authorized on January 10, 2023.
(2) For biological materials that are not accessible to the public, the applicant shall deposit them in accordance with Article 24 of the Detailed Rules for the Implementation of the Patent Law, and submit the deposit certificate and survival certificate issued by the depositary unit on the filing date or within four months from the filing date at the latest.
Related cases: CN201810041714.5 disclosed an invention patent application for "a lodging-resistant rice variety breeding method", which relied on the rice neck mutant as the parent to select lodging-resistant rice. The invention patent application specification records that the applicant has deposited the rice neck mutant in the General Microbiology Center of the China Microbial Strain Collection and Management Committee on December 21, 2017, and provided relevant proof of the preservation and survival of the biological material, that is, the biological material can be obtained by the public, in accordance with the provisions of Article 26, Paragraph 3 of the Patent Law, and was finally authorized on May 7, 2021.
summary
If the above-mentioned problems exist in the drafting of the application documents, the patent application does not comply with the relevant provisions of the Patent Law, and it will be difficult to overcome it by amending the claims or opinion statement in the subsequent examination stage, which will eventually lead to the rejection of the case.
Compared with other technical fields, the research in the field of crop breeding technology usually takes a long time, and it may take nearly ten years or even longer to cultivate and select a good variety. Therefore, when applying for a patent, the applicant or patent agent should pay attention to the above issues and write the application documents reasonably and with high quality, so that the research results can be effectively protected.
(Original title: Common problems and ways to avoid patent applications in the field of crop breeding technology)
来源:IPRdaily中文网(iprdaily.cn)
Author: Cao Jiatai, Beijing Gaowo Law Firm
编辑:IPRdaily辛夷 校对:IPRdaily纵横君