Plant patents were established in the United States in 1930, and since then, have provided valuable protection for plant breeders and developers. Unlike utility patents, which protect new and useful processes, machines, and compositions of matter, plant patents specifically protect the unique characteristics of a new plant variety, such as its color, shape, and other distinct features. This means that plant patents can be incredibly valuable for businesses that specialize in horticulture, agriculture, and other plant-related industries. In this post, we'll explore everything you need to know about plant patents, from what they are to their most popular applications.
Plant patents are specialized patents available for new and distinct varieties of plants. They allow inventors to exclude others from asexually reproducing or selling their patented plant for up to 20 years. The requirements for obtaining a plant patent include that the plant must be new, distinct, and not obvious to those skilled in the field. Additionally, the plant must have been asexually reproduced, and the applicant must provide a detailed description of the plant's characteristics. They have allowed plant breeders to protect their investment in developing new and distinct plant varieties, and have incentivized the development of plants with desirable characteristics. While the legal criteria for plant patents are strict, they provide an important tool for the agricultural industry to protect and profit from their innovations.
What is a plant patent?
According to 35 U.S.C. § 161, "Whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, may obtain a patent therefor, subject to the conditions and requirements of this title."
A plant patent is a type of patent granted to individuals or entities who have invented or discovered and asexually reproduced a new and distinct variety of plant. A plant patent protects the plant itself and any of its asexually reproduced offspring. The plant must meet certain criteria, including being novel, non-obvious, and different from any existing varieties.
Plant patents: A brief history
Plant patents were first allowed in the United States in 1930 with the passage of the Plant Patent Act. This act allowed inventors to patent new and distinct varieties of plants, excluding tuber propagated plants, for a period of 17 years. Prior to this, inventors could only obtain a patent for a new and useful process, machine, manufacture, or composition of matter.
Since the enactment of the Plant Patent Act, there have been several key cases that have helped shape the legal criteria for plant patents. One of the most notable cases is the Ex parte Hibberd case, which held that the plant must be new, distinct, and have an asexually propagated character to be eligible for a plant patent. This decision established the standard for plant patents and remains the guiding principle today.
What are the requirements for obtaining a plant patent?
To obtain a plant patent, the plant must meet certain legal criteria. The first requirement is that the plant must be new and distinct from any other known variety. This means that the plant must have different characteristics, such as color, size, or shape, that distinguish it from other varieties of the same species. It also means the plant must not have been previously sold, offered for sale, or otherwise made available to the public more than one year prior to the filing date of the patent application.
The second requirement is that the plant must be asexually propagated, meaning that it cannot be reproduced through traditional methods such as seeds. This is because asexually propagated plants can maintain their distinct characteristics from generation to generation, while seeds may not produce offspring with the same characteristics. Asexual reproduction can be performed through various methods such as rooting cuttings, grafting and budding, apomictic seeds, bulbs, division, slips, layering, rhizomes, runners, corms, tissue culture, and/or nuclear embryos.
The final requirement for a plant patent is that the plant must be invented or discovered by the applicant. This means that the inventor must be the first to discover and develop the plant, or must have created the plant through intentional breeding or genetic manipulation. The plant must be distinct from any existing varieties and not obvious to a person having ordinary skill in the field of plant breeding.
Case Study: Asexual reproduction criteria
This requirement that requirement is that a plant must be asexually propagated is an important point of consideration, as the USPTO has denied a plant patent application because the applicant failed to show a plant is capable of asexually reproducing, as set in precedent by In re Hibberd, 227 USPQ 443 (Comm’r Pat. 1985). In this case, it involved a patent application for a new variety of soybean. The Commissioner of Patents held that the soybean variety was not patentable subject matter because it was a product of nature, and the Patent Act only allows patents for "human-made" inventions.
This decision was later reversed by the Federal Circuit in a separate case, and the Plant Patent Act was amended in 1994 to explicitly allow for the patenting of new plant varieties. In J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc. (8th Circuit decision, 1999), a patent for a new variety of corn that was created through traditional breeding techniques. The Eighth Circuit held that sexually reproducing plants are patentable subject matter under the Plant Patent Act, even though the Act does not explicitly mention sexually reproducing plants. This decision was later affirmed by the Supreme Court in 2001.
What is the process of filing a plant patent application?
The plant patent application process is similar to that of a utility patent application, but with some differences. If you're looking to obtain a plant patent, here is a detailed breakdown of the process to aid in your application.
Step 1: Determine if Your Plant is Eligible for a Patent
Not all plants are eligible for a patent. To be eligible, your plant must be a new variety that has not been previously sold or offered for sale in the United States for more than one year. Additionally, the plant must have been asexually reproduced, meaning that it was not grown from seeds.
Step 2: Conduct a Thorough Search
Before you begin the process of filing a plant patent application, you should conduct a thorough search to make sure that your plant is truly novel and not already available in the public domain. This search can be conducted by yourself, but it is recommended to hire a professional patent search company to ensure that your search is comprehensive.
Step 3: Prepare and File a Plant Patent Application
Once you have determined that your plant is eligible for a patent and conducted a thorough search, you can begin the process of preparing and filing a plant patent application with the USPTO. The application must include the following:
A detailed description of the plant and its characteristics
A detailed description of the asexual reproduction process
A detailed explanation of how the plant differs from other known varieties
Color photographs of the plant
Any required fees
It is highly recommended that you seek the assistance of a patent attorney or agent to help you prepare and file your plant patent application. This will ensure that your application is filed correctly and meets all necessary legal requirements.
Step 4: Prosecute the Plant Patent Application
After you file your plant patent application, it will be assigned to a patent examiner who will review the application and determine whether your plant is eligible for a patent. The examiner may request additional information or changes to your application. It is important to respond to these requests in a timely manner to avoid any unnecessary delays in the application process.
Step 5: Receive the Plant Patent
If your plant patent application is approved, you will receive a plant patent from the USPTO. The plant patent will give you the exclusive right to asexually reproduce, sell, and use the plant for a period of 20 years from the date of filing the application.
What protection do plant patents offer?
A plant patent gives the patent holder the exclusive right to asexually reproduce, sell, or use the plant for up to 20 years. This can be especially valuable for farmers, nursery owners, and others in the horticultural industry who have developed new and distinctive plant varieties. The patent holder has the right to exclude others from asexually reproducing, selling, or using the plant. Plant patents expire 20 years from the filing date of the patent application, after which the subject matter enters the public domain. Unlike utility patents, plant patents do not require payment of maintenance fees to stay in force for the entire 20-year period.
What plant types are eligible for protection under the plant patent law?
Under the Plant Patent Act of 1930, plants can be protected by patents. To be eligible for protection, the plant must be "distinct, new, and asexually reproduced." But what types of plants does that actually include and not include? Here's a breakdown of what that means in terms of eligible plant types:
Eligible Plant Types:
Cultivated sports: a naturally occurring genetic mutation found in a cultivated plant that can be asexually reproduced.
Mutants: plants that have a naturally occurring genetic variation, resulting in new characteristics and can be asexually reproduced.
Hybrids: plants that are the result of a cross between two different species or varieties, and can be asexually reproduced.
New seedlings: plants that are grown from seed, but have unique characteristics that are asexually reproducible.
Algae and macro fungi: they are also eligible for protection under the Plant Patent Act. However, fungi (except macro fungi) are excluded from patent protection.
Ineligible Plant Types:
Tuber propagated plants: plants that are propagated by tubers, such as the Irish potato and Jerusalem artichoke, are not eligible for plant patent protection.
Plants found in an uncultivated state: plants that are discovered in the wild or by chance, and not developed or cultivated by humans, are not eligible for patent protection.
It's important to note that the plant must be reproduced through a method other than seeds, such as through the use of rooting cuttings, grafting and budding, apomictic seeds, bulbs, division, slips, layering, rhizomes, runners, corms, tissue culture, and/or nuclear embryos.
The impact of plant patents
Plant patents have had a significant impact on the agricultural industry by incentivizing the development of new and distinct plant varieties. They have allowed plant breeders to protect their investment in time and resources, and have encouraged the development of plants with desirable characteristics such as disease resistance, improved yield, and enhanced flavor.
One example of the impact of plant patents is the case of the Honeycrisp apple. This apple was developed by the University of Minnesota and patented in 1991, and has since become one of the most popular apple varieties in the world. The patent protected the university's investment in developing the apple, and allowed them to license it to growers and receive royalties.
Another example is The Knock Out rose, which was developed by rose breeder William Radler and patented in 2000. The Knock Out rose is known for its disease resistance and low maintenance requirements, and has since become one of the most popular rose varieties in the US.
Plant patents are a type of utility patent that covers new and distinct varieties of plants that have been invented or discovered and asexually reproduced.
In order to obtain a plant patent, the plant must be novel, non-obvious, and distinct from other known plants.
Asexual reproduction includes methods like cutting, budding, grafting, and tissue culture.
Plant patents last for 20 years from the date of filing and allow the patent holder to exclude others from asexually reproducing, selling, or using the plant without permission.
A plant patent application must include a detailed description of the plant and its characteristics, as well as drawings or photographs of the plant and its parts.
Infringement of a plant patent can occur if someone asexually reproduces, sells, or uses the patented plant without permission.
Plant patents have been subject to several notable legal cases, including Diamond v. Chakrabarty, in which the Supreme Court ruled that living organisms could be patented under certain circumstances.