
Patents, Plant Variety Protection, CRISPR, and What Every TTO Needs to Know with Heidi Sease Nebel
Plant discoveries can be some of the trickiest inventions for a technology transfer office to manage. A new variety may come out of years of breeding work, field trials, university research, or newer tools like CRISPR, but the protection strategy is not always obvious. Depending on the plant, the market, and how it will be commercialized, a TTO may need to think about utility patents, plant patents, Plant Variety Protection certificates, contracts, international rights, and the practical realities of working with breeders and licensees.
Today, we explore what every TTO needs to know about plant IP with Heidi Sease Nebel, a Member and Chairperson of the Biotechnology/Chemical Practice Group at McKee, Voorhees & Sease, PLC in Des Moines, Iowa. Heidi is an intellectual property attorney with more than 30 years of experience obtaining patents and developing IP strategies in biotechnology, chemicals, and pharmaceuticals, with deep expertise in plant-related intellectual property. Her work has supported more than 30 universities and research institutions, as well as Fortune 500 companies around the world.
Heidi brings a rare perspective shaped by some of the most important developments in plant IP law, including her involvement in the landmark U.S. Supreme Court case J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., which confirmed the availability of utility patent protection for plant varieties. She has also served on the USDA Plant Variety Protection Advisory Board, as Vice Chair of the USPTO Patent Public Advisory Committee, and as a member of CIOPORA, and more. She is a longtime AUTM contributor, a 2022 Iowa Biotechnology Association Biotech Leader Award recipient, AV Preeminent® rated by LexisNexis/Martindale-Hubbell, and has been recognized for multiple consecutive years by IAM Patent 1000 for her top-tier patent expertise.
We discuss the practical issues that make plant IP different from many other university technologies. We also talk about how CRISPR and gene editing affect patent strategy, why TTOs need to be careful with AI tools and public databases, and why it is so important to protect the actual product that will reach the market, whether that is a seed, plant, fruit, or trait-bearing variety. We also walk through licensing, enforcement, MTAs, international protection, and the relationship-building that needs to happen with plant breeders long before a variety is ready for release.
In This Episode:
[04:42] Heidi Sease Nebel explains the main forms of plant IP protection in the U.S., including utility patents, plant patents, and Plant Variety Protection certificates.
[07:18] Why utility patents often provide broader protection for plant varieties, and when a university might consider additional forms of protection.
[10:36] The J.E.M. Ag Supply v. Pioneer Hi-Bred case and how it confirmed utility patent protection for traditionally bred plant varieties.
[13:42] How the 2018 Farm Bill expanded PVP protection to asexually reproduced plants, hemp, and cannabis.
[16:45] International plant protection, UPOV, plant breeders’ rights, and the importance of tracking first-sale dates.
[19:55] Why experienced foreign counsel matters when pursuing plant protection outside the United States.
[20:34] CRISPR and gene editing strategy, including the need to claim the actual commercial product rather than only the molecular invention.
[22:45] The CRISPR patent pool created by Pioneer/Corteva and how it can help universities address licensing obligations.
[24:02] AI in plant breeding, potential public disclosure risks, and why TTOs should ask more specific questions about tools like ChatGPT and BLAST.
[27:00] Licensing challenges unique to plants, including saved seed, breeding rights, sequencing, genetic modification, and downstream ownership.
[28:49] Royalty structures for plant varieties and how the role of a parent line or asexually reproduced plant can affect licensing terms.
[31:16] Enforcement strategies, including sequencing, third-party storage, chain of custody, private investigators, and sampling licensee offerings.
[33:06] The role of the Seed Innovation Protection Alliance and how it can support TTOs with audits, tips, and enforcement concerns.
[34:47] Building relationships with plant breeders, keeping assignments current, and avoiding disclosure issues during field days.
[36:20] Material transfer agreements, germplasm sharing, and the cultural shift from informal seed exchange to stronger protection strategies.
[39:03] Enablement trends in biotech case law and how they may affect patent claims involving genetically modified plants.
[40:42] Section 101 patent eligibility concerns, naturally occurring traits, and how breeders can create patentable commercial varieties from wild plant material.
[43:25] Europe’s approach to plant patents, essentially biological processes, and the strategic considerations around the Unified Patent Court.
[45:38] Emerging issues Heidi is watching, including future PVP litigation, enforcement standards, and questions around seed deposits.
[48:26] Why plant IP protection can encourage investment while still allowing breeding under plant breeders’ rights systems.
[49:34] AUTM’s growing plant IP community, experienced university resources, and organizations that can help TTOs learn more.
[51:10] Final takeaways on plant IP strategy, CRISPR, licensing, enforcement, and the importance of talking with plant breeders early.
Resources:
Heidi Sease Nebel - McKee, Voorhees & Sease, PLC
J. E. M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc.
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