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Office of Commercialization Guidance on breeding with existing WSU protected cultivars

Preface

As WSU continues to release and license novel cereal grain varieties that generate royalty income, WSU breeders have the opportunity to breed new varieties using existing WSU varieties as a background breeding material. For background material protected under the Plant Variety Protection Act and as a matter of policy, WSU encourages all its breeders to share in the collaboration plant breeding effort. As such, this memo is to formulate a policy wherein an initial WSU variety is used to develop an ‘essentially derived variety” (EDV) by WSU breeders, where said policy is consistent with US plant variety protection laws under the Plant Variety Protection Act and Plant Breeder Rights 1 under UPOV .

REGULATIONS AND GUIDELINES

An essentially derived variety is any variety that meets these three conditions:

  1.  is predominately derived from an initial variety (UPOV Art. 14(5)(b)(i),
  2.  is clearly distinguishable from the initial variety (UPOV Art. 14(5)(b)(ii)); an
  3.  the initial variety is protected by PVP law and initial variety has term protection remaining

Usually, conditions 1 and 2 are satisfied when a breeder crosses with an initial variety more than once. It is assumed that any resulting variety will be an EDV.

In the event there is a dispute as to whether a variety in question is an EDV, the Faculty Manual §IV G. 5 of 2017-20018 Faculty Manual shall govern the dispute resolution.

This is applicable to WSU employees working with material that WSU has IP rights to; all WSU employees are obligated to assign rights to their Intellectual Property to the Washington State University as a condition of their employment. (See §IV.F. of 2017-2018 Faculty Manual)


Standard

Agreed upon Invention Disclosure Governs Royalty Distribution: In the event a
WSU variety (initial variety) is protected under Plant Variety Protection Act and the initial
variety is used to generate an EDV by another WSU breeder and from a program other than the one that developed the initial variety, WSU expects the breeder of the WSU initial variety and the breeder of the WSU EDV to come to an agreement as to the distribution of royalties for the EDV before the EDV Is released. This agreement would be manifested in an Invention Disclosure form indicating the initial variety breeder and agreed upon royalty attributed to royalties collected for EDV. The initial variety breeder shall receive the agreed upon royalty so long as the EDV receives a royalty in accordance with §IV G.8 of the 2017-2018 Washington State Faculty Manual.


Absent Agreement on Invention Disclosure

Absent an agreement between the initial variety breeder and EDV breeder on an Invention Disclosure form, any net royalties subject to distribution to the EDV “breeder” group, 50% will be distributed to the identified initial variety breeder from the “plant breeder(s)/contributor(s)” portion of net income, so long as the initial variety has IP protection remaining at the time of the royalty distribution date 2.

Ex: In accordance with the 2017-2018 Faculty Manual, if there is $10,000 of net income
to be distributed for a seed propagated crop, wherein (1) the variety is an EDV, (2) the
initial variety has PVP term remaining, and (3) there is no agreement on royalty
distribution with the initial variety breeder, the initial variety breeder shall receive $500
(50%) of the $1000 distributed to the EDV plant breeder(s)/contributor(s) portion of the
royalties.

1 Under UPOV 1991 – the definition of “breeder”, the entity or person(s) entitled to Plant Breeder Rights are:

  1. The person who bred, or discovered and developed, a variety,
  2. The person who is the employer of the aforementioned person or who has commissioned the latter’s work, where the laws of the relevant Contracting Party so provide, or
  3.  The successor in title of the first or second of the aforementioned person.

2 The Office Commercialization collects royalties from January 1 to June 30 and from June 1 to December 31. For ease of administration, when the initial variety IP term expires, the initial breeder shall be entitled to all royalties collected during said term.
Ex: If an initial variety PVPO term expires on January 1, 2018, the initial variety breeder shall receive royalties collected from January 1, 2018 to June 30, 2018. The initial variety breeder will not receive royalties collected from July 1, 2018 onward.