marker-assisted selection in wheat

Chapter 20 – Impacts of intellectual property rights on marker-assisted selection 419Most patents will be of concern primarilyto those in developed countries,particularly the United States where manyprivate companies have their base. Forexample, taking the company Pioneer, 209US patents assigned to Pioneer are identifiedwhen the US Patent Database issearched for the terms “breeding” in thepatent and “marker” in the claims. Thisis reduced to eight when the additionalterm “assisted” is searched in the claims ofthese 209. At the time of writing, Pioneerhad 46 published US patent applicationscovering the “breeding”+“marker” category;reduced to one with the addition of“assisted”. Monsanto, Bayer and Syngentahave utilized MAS practices for a numberof years and accumulated patent portfoliosand very likely many trade secrets inperfecting MAS techniques for their particularuses (Cahill and Schmidt, 2004).Monsanto announced in February 2007that it would begin sharing its markersfor soybean cyst nematode (SCN) resistancewith academic and public institutionresearchers worldwide. According to theannouncement, “Academic researchers andpublic institutions who request access willbe given a royalty-free licence for usingthe rhg1 marker under a patent that wasgranted to Monsanto in December 2006(US Patent no. 7 154 021)”. It is of interestto note that the company, Genome andAgricultural Biotechnology, LLC, with fiveissued US patents and five US patent applicationscovering SCN inventions, has beensued for patent infringement in the use ofSCN markers in conjunction with MAS(Genome and Agricultural Biotechnologyhad sought patent protection in order toestablish “freedom-to-operate” testingservices for material supplied by breederswho lack the facilities to perform MAStechniques for assessing the presence of particulardisease-resistance alleles [www.siuc.edu/~psas/faculty/pubs/lightfoot_achv.htm]). As this situation indicates, personswishing to establish their rights to usemarkers, by filing patent applications andeven obtaining patent rights, need to understandthat one cannot presume that anissued patent means that one then can practisethe inventions, described in the claims,without concern that one may also beengaging in infringement of another patentor set of claims that have been allowed inother patents.As of February 2007, a cursory searchof the US Patent Database as an indicatorof overall patenting activity related to MASand plants revealed 372 issued patents and112 published US patent applications. Ofthese 112 US patent applications, 79 wereassociated with plant breeding and 33 withanimal MAS.These numbers do not include mostof the patents covering equipment, PCRand PCR-related technologies like AFLP®,such as US Patent no. 6 045994 that maybe especially useful for generating markers.Also, analysis of the data indicates anincrease in the number of applicationssubmitted over the four years up to 2005,but most of these applications (58 percent)are for IPRs over specific plant varietiesand sets of markers that allow identificationof the germplasm variety. In recent yearsmany patents have been granted thatcover genes and markers associated witheconomically important traits in livestockspecies (Rothschild, Kim and Anderson,2006; Barendse and Reverter-Gomez,2007).Potential commercialization of suchinventions was predicted by Rothschild,Plastow and Newman (2004), as well as theassociated development of inventions formethods covering breeding management