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A plant patent is for newly invented strains of asexually reproduced plants. To be patentable, the plant must have been asexually propagated. 11 min read
What Is a Plant Patent?
A plant patent is for newly invented strains of asexually reproduced plants. To be patentable, the plant must have been asexually propagated. These are plants that reproduce by means other than from seeds, such as by the rooting of cuttings using layering, budding, grafting, or inarching. Not all countries allow the patenting of plants, but the USPTO issues a patent to anyone who has invented, discovered, or asexually reproduced a distinctly new kind of plant. This includes any cultigen, mutants species, hybrid species, and newly found seedlings not derived from a tuber-produced plant or a plant found in a wild state. Plants cultivated using tubers and wild or uncultivated plants are not patentable. The term "tuber" means short, thickened underground stem or rhizome. Plants covered by the term "tuber-propagated" include the Irish potato, Jerusalem artichoke, yams, and peanuts.
The History of Plant Patents in the U.S.
The U.S. Plant Patent Act of 1930 established patent rights for those inventors of new varieties of many asexually propagated plants. Two commonly patented examples are apple trees and rose bushes derived by cutting pieces of the stem, not by germinating seeds. Then as now, tuber-propagated plants, like potatoes, were exempt. This is because the part of the plant used for the propagation is also food. The 1985 legal decision known as Ex Parte Hibberd declared that utility patents, available to inventors since 1790, would also be applied to plants.
Why Do You Need to Know About Plant Patents?
Plant patents and trademarks create an incentive for design and innovation by plant breeders and scientists in the horticulture industry. Many falsely believe that these types of patents are commonly issued to protect the rights of the GMO or Genetically Modified Organism industry. However, that industry typically applies for a utility patent. Instead, plant patents promote the cultivation of new and novel plants and hybrids. Patenting a plant is similar to licensing any other new or novel invention and product. When a plant variety is patented, a royalty goes to the nursery or entity that owns the patent each time the plant sells. Plant patenting is an expensive, risky, and complicated process. The cost to patent a single variety of plant is thousands of dollars. There are no guarantees that consumers will want or appreciate the patented version.
When Should You Get a Plant Patent?
Any business, person, or nursery who breeds or discovers a new plant variety is the "inventor." There can be more than one inventor if filing for a patent jointly. Unless the inventor assigns the patent rights to another person or business through sale or voluntary forfeiture, the patent rights always belong to the inventor, or the inventor's successors, as personal property. A patent offers legal recourse for plant reproduction by use of cuttings, tissue culture, or any asexual means without the written permission or licensing by the inventor. Possession of illegally propagated plants of a patented species is infringement, even if the reproduction is inadvertent. To decide if a plant should be patented the inventor should consider the following four criteria:
- Is the plant exceptional, offering a significant contribution or valuable commercial and performance benefit?
- Does the benefit or contribution it offers outweigh the cost to the consumer?
- Can the market bear the introduction of a patented variety, including its royalty level?
- If the variety carries benefits, do they justify the premium cost of the royalty and the new product development and marketing processes?
It is the best practice to decide in advance, through market trials, if a variety will be received enthusiastically by the industry and if it can be profitable for all involved. Remember that if a plant is worth patenting, it is capable of providing a sustained royalty stream for many years or for the entire life of the patent term.
When Should You Not Get a Plant Patent?
Currently, you can get a plant patent only if the breeder or inventor has been able to asexually reproduce the plant by means other than through seeds. Asexual reproduction is required because it proves that the applicant can duplicate the process through which the plant was created. A new plant or series of plants might be eligible for a utility patent as well as a plant patent. Utility patents are usually for protecting species derived as the result of advanced scientific breeding, where the novel characteristics are genetically modified using an entirely new type of material. Outside the US, novel plants are protected by "Plant Breeders Rights."
Utility Patents for Plants
Utility patents have been issued since the 1980s for both human-made plants and plant elements. The criteria for utility patents varies from plant patents to some degree. Utility patent eligible plants can be reproduced either from seeds (sexually) or asexually. In the GMO (genetically modified organism) industry, utility patents are sought as a way to protect the specific elements of a plant such as proteins, genes or DNA strands, buds, pollen or fruit.
Utility patents are also appropriate for plant-based chemicals as well as any processes used to make these products. Plants that are resistant to pesticides or herbicides also fall into the category of GMO.
To get a utility patent, the plant must be made by humans and fit within the standard requirements of providing utility, novelty, and be a nonobvious creation. The patent draft should describe exhaustively and make a claim as to the specific characteristics of the plant for which protection is sought. This includes the claims as to the innovative properties of the new plant, as well as any contributions this it makes to society or the environment.
Often as part of the utility patenting process, seeds or plant tissues are sent to a public depository. For example, many countries have International Depositary Authorities for such purposes. A utility patent is typically more scrutinized. Therefore, it is more costly and time-consuming to acquire than a plant patent. A utility patent is considered, though, to be the stronger form of protection. This makes utility patenting of plants the first choice for large corporations that need to protect creations from both intentional and inadvertent infringement of the plant as well as its seed line.
Plant Variety Certification
Plant variety protection (PVP) is a certification process that allows breeders some degree of exclusivity over certain plant varieties they either invented or discovered. Since the goal of PVP systems is primarily the protection of natural material, breeders' rights do not cover any "technical processes" used in the propagation of the varieties. In other words, PVP doesn't grant exclusivity rights of particular breeding methods or systems. In these cases, a breeder needs to get a patent.
PVP varies from patenting in other ways. It is less expensive to get, the proof and documentation requirements are less intensive, and the types of plants that can be protected are not limited as they are in plant patenting. That said, the protection offered is much less. For example, farmers can save and reuse seeds from protected plants or sell the seeds for use on other farms.
Types of plants covered under PVP are sexually (seed) reproduced plants, tuber propagated plants, and F1 hybrids. Fungi, bacteria, and first generation hybrid varieties are not covered.
The cost of obtaining PVP or breeder's rights protection varies. In the US the costs are around $1000 and $2000 per plant for a term of 18 years from its date of issue, 25 years for trees and vine species. If you are seeking protection outside the US, you can expect to pay a minimum of $7,700. Fees are at a minimum $5,150. This amount includes $4,382 for the application, examination, and certificate. A fee of $768 is charged upon certification issuance, and attorney fees add $2,968.
Deadline for Filing a Plant Patent
A plant patent application should be filed within one year from the first date or instance that the variety was made available or known to the public anywhere in the world. Even if the new type is described in any publication or the Internet, it is assumed that the one-year grace period has commenced.
Examples: Plant Patenting Results
The Smooth Angel Rose, a plant patented by Henry Davidson of Orinda, California, was described as follows in its patent.
"A new rose variety of the hybrid tea class distinctive in its character by being near thornless and by having blooms which open with the outer petals being a cream color and the center petals yellow-orange as hereafter shown and described. This rose is novel and distinctive from previous rose plants in the following ways: (1) near thornlessness (2) an attractive full foliage spreading plant; (3) a medium to large, tight centered, full, symmetrical, two toned cream and yellow-orange bloom. Asexual reproduction of the Smooth Angel was performed in California and was continued through succeeding propagations." The discovery of a new plant found growing in the wild is not eligible for patent protection. The courts found in 1841 that a patent cannot be granted for a "mere naked discovery."
Specifically, In re Kemper, 14 F. Cas. 286, 288 (D.C. Cir. 1841), determined that plants found growing in an uncultivated state, whether discovered growing naturally, on a cultivated plot or discovered in the woods, are not patentable.
Sometimes whether a plant is patentable is not clear. Recently, in the U.S. Court of Appeals case In re Beineke, Fed. Cir., pat application No. 2011-1459, the court found that the exception to the earlier non-patentability rules was in the newly discovered seedlings, found growing on a cultivated plot. If seedlings, they do not need to have been created by the plant breeder so long as they were discovered by the patent applicant on an area of cultivated land.
The Federal Circuit in the Beineke decision explained that "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."
Common Mistakes In Determining Patentability
A plant is defined by the USPTO as a living thing of natural composition. This physical form is made possible by the genes the plant possesses. These genes reproduce in a way that allows the genes to transfer to daughter plants. One common mistake is when plants are submitted as new or novel while containing these genes. New technology has made the defense at this level a standard practice. Other mistakes happen when a plant is submitted for patenting that doesn't meet the qualifications. The general guidance for determining whether a plant is suitable for patenting are:
- When compared with another plant that is related genetically, the potentially patented plant will have at least one thing identifiably different about it.
- The plant has to be new, either by cultivation in a nursery or greenhouse or a discovery in nature.
- If it's a newly discovered plant, it may enter into the patent application only if the person who first saw it is the one applying.
- Other industry experts can't have thought the plant was an obvious invention.
- The plant is not offered for sale before the application.
- The plant is not available to the public for more than one year before the application.
Frequently Asked Questions
- Does the breeder have to be represented by a patent attorney?
The USPTO recommends that all patent applicants be represented by a registered Patent Attorney or Patent Agent. However, they are required to allow and help any independent inventor, breeder, or discoverer, in prosecuting their own application if the applicant is sufficiently competent.
- How can I check to see if a plant is patented?
All patented plants are to display a tag and be listed in trade publications and catalogs with a clear statement of the patent number. Patents can be researched on the website of the USPTO at www.uspto.gov, using the issued patents search feature.
- How can I check to see if a patent was newly filed?
All patent applications are kept in secrecy until 18 months after the date of filing.
- How long does a plant patent last?
Plant patents last for a term of 20 years, issued from the date of filing.
- What does PPAF mean?
PPAF "Plant Patent Applied For," is the equivalent of "Patent Pending." It is a federal offense to knowingly or erroneously state that a plant variety is PPAF when it is not.
- How is a trademark different?
Trademark protections include word, name, symbol, and device. These are used in commerce to distinguish the products of one manufacturer or seller from goods produced or sold by another in the same market. This is different from a plant patent which serves to legally control, permit, and exclude the production of a plant variety. Trademarking is one way that those in the nursery industry receive recognition for their plants. It is often faster and cheaper than applying for a patent and is renewable every ten years. Trademarking may help a company build brand loyalty. It is an important distinction that having a trademark on a plant protects only the name of the plant, not the plant itself, as does a patent. Any person can still propagate a trademarked plant, name it something different, and still be within the lawful confines to do so.
- Can a plant be protected using Trade Secrets laws?
Yes. Plants can be protected, so long as reasonable and provable efforts have been made to keep it confidential and out of the public domain. A common example of trade secret law protecting plants in the United States is the protection of individual genetic lines of hybrid corn. In recent years, the United States court system recognized that a "genetic message" of an inbred plant could be protected by trade secret laws, subject to the provisions stated.
- Can illegal plant substances be patented?
Yes, you can patent pot. The USPTO confirmed that officials are accepting and processing patent applications for individualized varieties of cannabis that include innovative medical uses and other associated inventions for both utility and plant patenting. With the legalization and privatization of marijuana, the industry is predicted to reach $50 billion by the year 2022. The concern is rising among legal pot growers that they need to defend their creations from infringers, patent trolls, and corporations like Monsanto.
- How much does it cost to patent a plant?
For independent and designated small entities the cost to patent a plant is expected to be around $7,000. For a larger entity, the cost is around $8,000 per patent.
United States Patent and Trademark Office has set the plant patent application fees to start at $570. They are double that amount for a small entity and half that amount for a micro-entity. Allowance costs include charges for publication and other issuance fees plus attorney fees of $250. Total attorney fees from application through to a final decision add at least additional $5,000. There are no maintenance fees involved with plant patents.
Drafting a Plant Patent
The requirements to get a patent for a plant are the same as those for utility patents. However, the implementation is less stringent. For example, the Plant Patent Act provides that "(...) plant patents will not be rejected or invalidated if the plant is not fully described or enabled." While it does require that the new variety of plant is described as thoroughly as is reasonably possible, it is not necessary for the claimed plant to be submitted to the official depositary. The common test of 'nonobviousness' is not applied in the same way to plant patents, as it is very challenging to create a new plant variety that is both resilient and asexually reproduced.
Application and Proceedings
The application and proceedings on the granting of plant patents are similar to those for utility patents. However, there are more specific requirements, including describing the included characteristics which distinguish the new plant from related existing varieties as well as all of its known antecedents.
The description given must first be presented in botanical terms but very generally. This is followed by the description given in standard agricultural language as it appears in textbooks or scholarly and trade publications. This language should be such that those dealing with the varieties of the kind of plant involved would be able to conceive of the new plant rather than the type of broad non-botanical language that is commonly printed in nursery and seed catalogs.
The description should include the plant's known parentage including an in-depth genealogy of the plant variety sought for the patent. It must point to where and in what manner this type of plant was asexually reproduced. The description should precisely identify the color —if the color is one distinctive feature. The application will contain a plant color code sheet.
If the plant originated as a newly found seedling, specifications must follow and adequately describe the conditions, including the cultivation environment and any conditions in which the seedling was found growing. This establishes that the plant was not identified in an uncultivated area.
The application must be filed in duplicate. This is because one copy goes to the Agricultural Research Service a part of the Department of Agriculture. They issue a separate advisory report on the patented plant variety.
Plant patent drawings are not mechanical drawings. Instead, they are photographic. Sometimes, they are artistically rendered to sufficiently emphasize all the distinctive and novel characteristics of the plant which are capable of visual representation. If color is a feature of the new plant, the drawing is in color.
The method of filing is manual. Applications are prepared on paper as the USPTO does not accept any electronic filing of plant patents. If you need help preparing and filing your plant patent, contact a lawyer through UpCounsel to help make the process easy.