navigating the patent maze

Can you sue under trade secret law if you registered the plant varieties?

Posted in Agriculture-related Patent News, Court Cases to Watch, Patent News - United States by lorac on the December 8th, 2004

One form of legal protection for biotechnology inventions, which is not often used, is trade secrecy. This right, in contrast to patents and copyrights, is not registered and is of unlimited duration, as long as the holder of the trade secret makes reasonable efforts to maintain secrecy. With regard to keeping parental lines of hybrid seed as a trade secret, for example, identification by private code of fields of inbred parent lines of corn has been deemed, in the 1994 Iowa case Pioneer Hi-Bred v. Holden Foundation Seeds, sufficient to constitute a reasonable effort to maintain secrecy, even though the corn was grown outdoors and subject to misappropriation by informed “flashlight breeders.”  Furthermore, acquisition of the viable parent seeds that occasionally appear in bags of hybrid seeds is not antithetical to trade secrecy. But what if the parental lines are protected by Plant Variety Certificates (akin to plant breeder’s rights)?  One might think that the disclosure requirement to register a plant variety would destroy the secrecy necessary for maintaining the lines as trade secrets. 

The short answer from the District Court of the Western District of Wisconsin is NO, registration does not extinguish trade secrecy. 

The case is Advanta USA Inc. v Pioneer Hi-Bred International Inc. W.D. Wis., No. 04-C-238-S, 10/27/04.

In this litigation, Advanta admitted that they combed out seed of the parental lines from bags of hybrid corn.  Although initially the charges were focused on patents owned by Pioneer, it came to light that Pioneer had a patent on the hybrid corn lines, but not on the parental lines.  Quickly then, allegations of misappropriation of trade secrets became the issue.  The parental lines however, are registered under the PVPA.  Of course, registration requires some amount of disclosure, which would seem at first blush to extinguish any claim of misappropriation.
The Court found otherwise though: The issuance of a PVPC does not per se extinguish the secrecy necessary to maintain a trade secret.  In particular, the PVPA does not require that information about registered plant varieties be made accessible to the public.  Moreover, the disclosure requirement for obtaining a PVPC does not need to be enabling such as is required for a patent.  Therefore, there is no inherent conflict between obtaining plant variety protection and maintaining the protected variety as a trade secret. 
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2 Responses to 'Can you sue under trade secret law if you registered the plant varieties?'

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  1. Alex Thurgood said,

    on March 6th, 2005 at 2:19 am

    I haven’t read the decision in detail, but it does seem an amazing assumption to make by the court that because the PVPC procedure does not need to be disclosed to the public or have the same enablement requirements as a patent, then a PVPC application does not break the secrecy coverage. The PVPC grants a protective right for a plant variety, the characteristics of which have to be described and meet certain criteria defined by the law. The existence of the PVPC is made public. I seem to recall that the US public have a fundamental right to access to certain federal records, but I don’t seem to recall that PVPC procedures were on the excluded list of such information. Of course, I’m looking at this from a European perspective as a European attorney.

    In France, where I work, the data that needs to be provided to obtain a PVP is publicly accessible, for example the European Community PBR Office has this page :

    http://www.cpvo.fr/default.php?res=1&w=1334&h=848&lang=en&page=document/accesdoc/accesdoc.htm

    This then begs the question : if foreign (non-US applicants) can not benefit from the Court’s interpretation of secrecy, then is the Trade Secrecy protection afforded under this interpretation TRIPS compliant, in the sense that a US jurisdiction will not offer the same treatment to a non-US plaintiff as to one resident in the US ?

    Regards,

    Alex Thurgood

  2. Carol said,

    on March 14th, 2005 at 1:52 pm

    The Court said that trade secrecy is not per se in conflict with the disclosure requirements of the PVPC. Rather, it is a fact specific determination. Advanta (the defendent) was attempting to have the case decided on the basis that PVPC and trade secrecy law are in conflict, meaning that, under principles of U.S. law, PVPC law is controlling.

    Unless appealed by Advanta or settled out of court, a trial court will now examine the facts of the case to see if Pioneer really had a trade secret or not.

    I don’t see a conflict with TRIPS because a contention of trade secrecy by a non-national would be treated similarly - did the disclosure in France or Australia or whereever extinguish protection under trade secrecy. As nationals can and do file in other countries, it would seem that those disclosures would also be considered by a court. Thus, if Pioneer filed for PBR protection in France, the public disclosure from that filing would be considered as well.

    Personally, I think the court was wrong and that Pioneer should not be accorded the opportunity to claim trade secret, but I am a patent lawyer, not a judge.

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