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Louis Ventre, Jr.

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PLANT PATENT DETAILS

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PLANT PATENTS DEAL WITH PHOTOSYNTHETIC LIFE

(Reflects Government Fees effective 19-MAR-2013)

patent%20attorney%20star What is a Plant Patent? A plant patent is the grant that includes the right to exclude others from asexually reproducing a plant (see below for certificates for other plant intellectual property), and from using, offering for sale, or selling the plant so reproduced, or any of its parts, throughout the United States, or from importing the plant so reproduced, or any parts thereof, into the United States. A plant patent is available to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant. The kinds of plants involved are cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state.

patent%20attorney%20star What is Excluded? If you discover a new plant found growing in the wild, it is not eligible for plant patent protection. The courts from as early as 1841 have found that a patent may not be granted for “mere naked discovery.” In re Kemper, 14 F. Cas. 286, 288 (D.C. Cir. 1841). Plants found growing that are not the result of the inventor's efforts, e.g., found in an uncultivated state, whether on a cultivated plot or in the woods, are not patentable: This according to the U.S. Court of Appeals for the Federal Circuit (In re Beineke, Fed. Cir., No. 2011-1459, 06-AUG-2012). The court found that Congress intended "patent protection was available only for plants resulting from human creative efforts by the patent applicant, and not for found plants." The exception to these non-patentabilty rules are newly found seedlings, which were found in a cultivated plot. Such seedlings do not need to have been created by a plant breeder so long as they were discovered by the applicant on cultivated land. The Federal Circuit in the Beineke decision explained: "The apparent assumption underlying this [found seedling law] was that an exception was warranted for newly found seedlings because, the plant having been a seedling at the time of its discovery, it could be assumed that it was cultivated in its inception and that the cultivation of the land by man contributed to its creation."

Plants capable of natural reproduction are not necessarily excluded from consideration, but they must have also been asexually reproduced and not found growing wild in the natural environment. Essentially, this means that plants that can be patented are those that are reproduced by means other than from seeds, such as by the rooting of cuttings, by layering, budding, grafting, inarching, etc.

Tuber propagated plants, like the Irish potato and the Jerusalem artichoke, are not patentable essentially because this group alone, among asexually reproduced plants, is propagated by the same part of the plant that is sold as food.

A naturally occurring bacterium is not patentable as a plant.  However a genetically engineered microorganism, that is, an artificial bacterium, may be patentable as a utility patent.  This was decided by the Supreme Court in 1980 in Diamond v. Chakrabarty, 447 U.S. 303 (1980).

PLANT PATENT APPLICATION UNIQUE ASPECTS

patent%20attorney%20star Application and Proceedings. The application and proceedings relating to granting of plant patents are basically the same as those relating to utility patents. However, there are specific requirements including ---
  • The description must include the characteristics that distinguish the invented plant over related known varieties, and its antecedents.
  • The description must be in botanical terms in the general form followed in standard botanical text books or publications dealing with the varieties of the kind of plant involved, rather than a mere broad non-botanical characterization such as commonly found in nursery or seed catalogs.
  • The description should also include the origin or parentage of the plant variety sought to be patented and must particularly point out where and in what manner the variety of plant has been asexually reproduced.
  • The description should positively identify the color when color is a distinctive feature of the plant.
  • Where the plant variety originated as a newly found seedling, the specification must fully describe the conditions (cultivation, environment, etc.) under which the seedling was found growing to establish that it was not found in an uncultivated state.
  • The application must also contain a plant color coding sheet.
  • The application papers must be filed in duplicate because the duplicate is sent to the Agricultural Research Service, Department of Agriculture for an advisory report on the plant variety.
  • Only one claim is permitted.
  • Plant patent drawings are not mechanical drawings. They are normally photographic. They may also be artistically rendered so as to disclose all the distinctive characteristics of the plant capable of visual representation. When color is a distinguishing characteristic of the new variety, the drawing must be in color.

patent%20attorney%20star Method of Filing. Applications have to be prepared on paper because the United States Patent and Trademark Office does not accept electronic filing of plant patent applications.

PLANT PATENT APPLICATION COSTS

patent%20attorney%20star Costs. Total small entity cost through issuance is expected to be at least $7,000 and large-entity cost is $8,000. United States Patent and Trademark Office plant patent application filing fees for a small entity are $570 beginning 19-MAR-2013, double that for a small entity and half that for a micro-entity. After allowance, costs are expected to be $630 for a small entity, $1,010 or a large entity and $340 for a micro-entity. Allowance costs include government charges for publication and issuance fees plus attorney fees of $250.  Attorney fees through to a final examiner decision are estimated to add an additional $5,000.  No maintenance fees are required for plant patents.

patent%20attorney%20star Services After Filing. Attorney fees for most small entities after filing are charged at the rate of $175 per hour up to a maximum charge of $2,000 to a final examiner decision, excluding petitions and other unusual costs. This amount is included in the $5,000 estimate given above. Proceding beyond a final examiner decision is possible at extra cost. This Law Firm's large entity hourly fee is $250 per hour.  Patent prosecution activities after filing are similar to a utility application.  If the Patent Office examination leads to a determination that an applicant is entitled to a plant patent under the law, a notice of allowance is sent to the applicant’s attorney, calling for the payment of the issuance fees.

PLANT PATENT LIFETIME

patent%20attorney%20star Patent Lifetime. New plant patents have a 20 year life from the filing or priority date of the application.

CERTIFICATES FOR UNPATENTABLE PLANTS

patent%20attorney%20star Other Plant Intellectual Property.  A breeder of a new variety of a plant, which is reproducible from seeds and which possess distinctiveness, uniformity, and stability, can seek protection of that plant variety under the Plant Variety Protection Act.  You should expect this protection to cost a minimum of about $7,700 if you have all of the required information for the application.  Certain exceptions apply. Government fees are currently estimated at a minimum of $5,150, including $4,382 for the application and examination; and a certificate fee of $768 upon issuance of the certificate. Attorney fees add an additional $2,968.

The Department of Agriculture, and not the Patent Office, has authority to issue a certificate of plant variety protection (not a patent, but largely equivalent) on sexually reproducible plants.  The  certificates can provide their owner with 20 years (25 years for trees and vines) of the exclusive right to “exclude others from selling the variety, or offering it for sale, or reproducing it, importing, or exporting it, or using it in producing (as distinguished from developing) a hybrid or different variety therefrom.”  Fungi and bacteria are not eligible for a certificate. 

As long as you have not sold seed of the variety, offered or advertised it for sale for more than 1 year in the United States, prior to the date your application is filed at the USDA, your variety is still eligible for protection. You have more than one year of eligibility if the variety has only been sold in a foreign country. That time would be 4 years for most crops, and 6 years for a tree or vine.

No written descriptions are necessary and obviousness is not considered in issuance of a certificate.  2,500 seeds must be deposited with the Department.  These deposited seeds are in a public depository, but are not staturorily required to be accessible to the general public during the term of the certificate. The Plant Variety Protection Act is codified at 7 U.S.C. §§ 2321-2583. Note that the Plant Variety Protection Act provides exemptions from infringement for farmers to save seed from their crops for replanting on their own farm, for research, and for transporters and advertisers (7 U.S.C. § 2545). There is also a compulsory licensing clause with a “just price” provision (7 U.S.C. § 2404) : Utility patents for plants do not contain such exemptions from infringement. This contrast in protection is probably most significant in two respects: a farmer may not replant seeds on plants that have been awarded a utility patent; and, a breeder can use a plant that is protected by a Plant Variety Protection certificate to ‘develop’ a new inbred line but may not use a plant patented by a utility patent for that purpose.

GET ALL 3: PLANT PATENT, CERTIFICATE AND UTILITY PATENT

patent%20attorney%20star Multiple Applications.  The U.S. Supreme Court in J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., 122 S. Ct. 593 (2001) held that sexually reproducing plants may also be subject to utility patents.  In addition, the Patent Office will allow a utility patent application for asexually reproducing plants.  However, the period of protection may not be extended by multiple applications.  

The choice of which protection to seek, or whether to seek concurrent protection under all three statutes, might be important.  For example, a breeder of a seed-bearing plant could claim that a plant was useful, novel and nonobvious, entitling the breeder to file a utility patent application.  The breeder  might also show that the plant was new, distinct, uniform and stable, and therefore claim entitlement to a plant variety protection certificate.  And thirdly, the breeder might produce a cutting or otherwise asexually reproduce the plant, and claim entitlement to plant patent protection.

patent%20attorney%20star Some Benefits to Multiple Applications.  A utility patent could avoid the Plant Variety Protection Act's authorization of otherwise infringing uses of the plants for breeding and research and for farmers to use seeds descending from originally protected seeds that were legitimately purchased.

MORE INFORMATION ON PATENT APPLICATIONS

patent%20attorney%20star More Answers on Patents. See the FAQ page for more questions answered on patents, the design patent page for information on design patents, and the Utility Patent Details page for general patenting details.

PROCEEDING TO A PLANT PATENT APPLICATION OR CERTIFICATE

patent%20attorney%20star How to Proceed. Telephone (703-242-1247) or email Louis Ventre, Jr. with a short description of the plant you want to protect. If the Law Firm has no conflicts and agrees to represent you, you will be sent a retainer agreement with additional instructions on what information is needed.  As with utility patents, a preliminary search of U.S. patents and U.S. applications will be performed to make a judgment on patentability.  After receiving a preliminary patentability determination, if you decide not to submit an application, your retainer will be refunded less any cost paid to the charge card company to process your credit card payment (if any) of the retainer.





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