The Corn Seed War Creating an I.P. Conflict

A lawsuit between Corteva and Inari Agriculture slowly winding its way through a Delaware federal court is raising unique and compelling issues regarding the intersection of patent law and Plant Variety Protection (PVP). Since we initially reported on the case last October, the parties have filed briefs on Inari’s motion to dismiss the case, bringing the issues into sharper focus.

A fundamental requirement of patent law, a patent must include a full written description of the invention that will allow someone skilled in the art to make and use the invention. In exchange for disclosing the invention and underlying technology to the public, the inventor gets a patent from the government, i.e., a 20-year monopoly to commercially exploit the invention (sometimes referred to as the “patent bargain.”)

Because describing plant inventions in writing can be difficult, patent law allows an inventor to supplement the written description by making a deposit of biological material (e.g., seed) with an authorized repository. Thus, Corteva deposited corn seed with the American Type Culture Collection (ATCC), an authorized non-profit repository, when applying for U.S. Patent No. 8,575,434 (‘434 Patent). One consequence of depositing seed is that “all restrictions” to access the deposit must be removed when the patent is granted – in other words, the deposit becomes available to the public without restriction.

As it turns out, the seed Corteva deposited with ATCC for the ‘434 Patent was also the subject of PVP certificates, i.e., the seed was also from PVP-protected varieties. One key difference between PVP and patent law is that viable seed must be deposited with the National Laboratory for Genetic Resources Preservation to obtain a PVP certificate. However, PVP deposits are not available to the public until after the PVP certificate expires. A brief summary of the factual background is below:

• 2019 – Inari’s Belgium division (Inari-Belgium) executes a Material Transfer Agreement (MTA) with ATCC to obtain deposited materials.
  • The MTA restricts the use of the materials to “non-commercial research,” but also indicates that “Applicable law” governs the agreement, which would mean U.S. patent law.
• 2020 – Inari-Belgium places purchase orders with ATCC for Corteva’s corn seed deposits.
  • Those orders are fulfilled by sending seed to Infinite-Eversole Specialty Crop Services LLC (IESCS).
  • IESCS obtains phytosanitary certificate for the seed, packages and ships to Inari Belgium
• 2020 – 2021 – Inari-Belgium performs gene editing on the corn seed, resulting in a new, gene-edited version of insect-resistant corn.

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• 2021 – Inari’s U.S. division (Inari-US) applies for a utility patent for the gene-edited versions of the corn.
  • Inari informs Corteva that it purchased some of Corteva’s deposited seed from ATCC and developed new gene-edited versions outside of Corteva’s patents. Inari inquires about a soybean collaboration with Corteva.
• 2022 – Inari’s patent application for the gene-edited event is granted.
  • Corteva says “no” to a collaboration with Inari.
• 2023 – Corteva sues Inari for patent infringement, PVP infringement of Corteva’s corn varieties, and breach of the MTA with ATCC.

The patent and PVP infringement claims in the suit raise some interesting (and geeked-out) I.P. issues:

• If patent law requires seed deposits to be publicly available without restriction, is it an infringement of Corteva’s patent to conduct gene-editing on the deposited material?
  • The deposited seed, by itself, really doesn’t add to the written description in the patent – the seed, particularly the genetic components within the seed, must be analyzed in some fashion for the deposit to be a meaningful addition to the written description of the invention.
• Is it an infringement of PVP certificates to access and conduct gene-editing on PVP-protected seed that was deposited to satisfy patent law? Stated another way, can Corteva prevent the public from accessing its patent-related deposits by arguing the material is simultaneously protected by PVP?
  • On its face, this raises a potential conflict between patent law and PVP law – can PVP be used to trump patent law’s written description requirement? Doesn’t that undermine the fundamental patent bargain?
• Is gene-editing the seed’s genes to develop a new corn plant considered “non-commercial research,” or is it a “commercial use” of the seed that violates the MTA with the ATCC?
  • Corteva has also argued that obtaining a phytosanitary certificate and packaging the seed for shipment to Belgium is a “use” of the seed, and therefore is an infringement of the patent.
• If the seed deposit has “restrictions,” has Corteva failed to meet the written description requirement for the ‘434 Patent, i.e., is the patent invalid?

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• What are the implications of gene-editing a variety that is already protected?
  • Since Inari received a utility patent for its edited version of Corteva’s corn, it appears that gene-editing an existing variety will result in a new and patentable invention.
  • However, the PVP extends protection to “essentially derived varieties,” meaning that new varieties that are “essentially derived” from a protected variety are within the PVP certificate. Thus, does PVP give ownership of the gene-edited variety to the owner of hte original variety?

These are just a handful of the interesting (nerdy) I.P. issues and make it quite likely that an appellate court will be weighing in to clear up the mess at some point down the road.