Top Three IP Issues For Agtech Startups

MoFo Life Sciences

MoFo Life Sciences

Innovation, agriculture, and technology took center stage at San Diego’s first AgTech Hackathon. The event took place October 21 – 23 in the city of Escondido, a key farming hub in San Diego County looking to attract agtech startups to the region. The event brought together entrepreneurs, farmers, investors, students, and community leaders to collaborate and develop innovative agtech ideas into viable business pitches.

MoFo was a proud sponsor of the event, and Partner Matthew Ferry served as a judge in the pitch competition that culminated the weekend. Prior to the competition, Matthew Ferry and scientific analyst Dr. Edith Pierre-Jerome presented on the Top Three IP Issues for AgTech Startups, including:

#3. Not understanding the different IP areas applicable to your business.

Intellectual property takes many different forms. Classic forms of IP, such as patents, copyrights, trademarks, and trade secrets, are all forms of intellectual property protection that can be used strategically to protect different aspects of a business. Here are the main differences between them:

Patents provide exclusive rights to inventions. There are three types of patents within the United States:

  • Utility patents, which protect a new and useful process, machine, manufacture, or composition of matter;
  • Design patents, which protect a new, original, and ornamental design of a functional item; and
  • Plant patents, which protect the invention or discovery of a new and distinct

Copyrights protect original works of authorship fixed in a tangible medium of expression, like a book or this blog post.

Trademark rights protect words, phrases, or designs that denote a product or service and help consumers associate the product or service with its source.

Trade secret rights protect information that derives value from not being generally known and is subject to reasonable efforts to maintain secrecy.

Plant Variety Protection (PVP) certificates are a plant-specific form of IP protection that, similar to patents, provide exclusive rights to new sexually reproduced, tuber propagated, and, as of 2020, asexually reproduced plant varieties. Unlike patents, PVP certificates are issued by the USDA Plant Variety Protection Office, offer use exemptions for noncommercial purposes, and cover Essentially Derived Varieties. For more information, see Planting the Seeds of Change | MoFo Life Sciences.

#2. Employees, contractors, and founders failing to assign IP to the company.

In the United States, a patentable invention or discovery belongs to the inventor until ownership is assigned to another person or entity. This is true (generally) even if the inventor was an employee or founder of the company.

Without owning the IP, the company may not be able to stop others from practicing the invention and may have unclear rights in its own freedom to operate. As a company matures and seeks to attract investment, investors will often look to make sure all the intellectual property meant to be owned by the company is actually owned by the company. This may not be the case if the inventor did not assign their rights to the company in writing.

Assignment to the company should happen early on since it is often difficult to track down inventors the more time passes.

#1. Publishing inventions before filing for patent protection.

Inventors are often their own worst enemy when it comes to obtaining a patent. Once the subject matter is published or publicly used, the inventor may no longer be able to obtain patent protection in many foreign jurisdictions and has a strict one-year deadline to seek a patent within the United States.

AgTech startups may want to publish whitepapers, sell prototypes, or gain traction for their market by publishing and presenting their discoveries. But they should beware of doing so without first consulting IP counsel. An inventor who publishes a paper or presents a talk at a conference, without having first filed a patent application, may have unwittingly lost the ability to obtain patent protection.

With a growing population demanding an increased supply of healthier foods and global climate change altering where and how we can grow it, the innovations being developed by the AgTech community have never been more vital.”

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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