Plant Patents and Other IP Protection for Plants

Practices Patents Plant Patents and Other IP Protection for Plants

Patent protection generally is available for any new and useful process, machine, manufacture, or composition of matter or any new and useful improvement thereof. This includes virtually any conception of the human mind but necessarily excludes certain subject matter, including abstract ideas, laws of nature, and natural phenomena. While it may seem counterintuitive with these exceptions in mind, plants are not categorically excluded from patent protection. In fact, plant patents — along with utility patents and design patents — are one of the three types of patents issued by the United States Patent and Trademark Office (USPTO). If you have developed an innovative plant that you believe may have commercial value, it may be entitled to patent protection under the right circumstances, which a plant patent attorney can discuss with you. 

Patent Protection Is Available for Plants 

Plant patents are granted by the USPTO to inventors who have invented or discovered and asexually reproduced a distinct and new type of plant (other than a tuber-propagated plant or a plant found in an uncultivated state). “New and distinct” in this context can mean many things, such as the plant’s growing or flowering habits, storage methods, or resistance to diseases. Plant patents remain in force for 20 years from the date of application and are not renewable (the same period as utility patents). 

Defining “Plants” 

The USPTO limits plant patent protection to “plants” given their ordinary meaning, which includes: 

• Living plant organisms that express a set of characteristics determined by their single genetic makeup or genotype, which can be duplicated through asexual reproduction but cannot otherwise be “made” or “manufactured.” 
• Cultivated sports, mutants, hybrids, or transformed plants, where sports or mutants may be spontaneous or induced, and hybrids may be natural, from a planned breeding program, or somatic in source. Natural plant mutants may be naturally-occurring, but they must have been discovered in a cultivated area. 
• Algae and macro-fungi are considered plants, but bacteria are not

The inventor of a plant may be an individual or a group of inventors. For example, when one person discovers and asexually reproduces a plant, that person would be the sole inventor. However, where one person discovered a plant and a second person asexually reproduced it, both individuals would be considered the inventor of the plant. 

Defining “Asexual Reproduction” 

A key requirement for plant patent protection is that the plant be asexually reproduced. Asexual reproduction is the propagation of a plant without the use of fertilized seeds such that an exact genetic copy of the plant can be produced. Any known method of asexual reproduction that renders a true genetic copy may be used, including: 

• Rooting cuttings
• Grafting and budding
• Apomictic seeds
• Bulbs
• Division
• Slips
• Layering
• Rhizomes
• Runners
• Corms
• Tissue culture
• Nucellar embryos 

The asexual reproduction requirement is meant to establish the uniformity and stability of the plant and to provide proof that the patent applicant can duplicate the plant. 

Requirements of Patentability for Plants

The requirements of patentability for plants are established at 35 U.S.C. § 161. The statute reads: “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.” Over the years, the courts and the USPTO have further clarified the requirements for plants to be patented, which require the applicant to demonstrate the following: 

1. The plant was invented or discovered in a cultivated state and asexually reproduced.
2. The plant is not a type that is excluded by statute where the part of the plant used for asexual reproduction is not a tuber food part (such as the potato).
3. The inventor named in the patent application is the person who actually invented the plant (i.e., discovered or developed and identified or isolated, and asexually reproduced the plant).
4. The plant has not been patented, in public use, on sale, or otherwise available to the public prior to the effective filing date of the patent application. 
5. The plant has not been described in a U.S. patent or published patent application. 
6. The plant is shown to differ from known, related plants by at least one distinguishing characteristic, which is more than a difference caused by growing conditions or fertility levels. 
7. The invention would not have been obvious to one having ordinary skill in the art as of the effective date of the claimed plant invention. 

Given these strict requirements of patentability for plants, it is advised that you seek the counsel of a plant patent attorney before filing a plant patent application. 

The Elements of a Plant Patent Application 

The processor obtaining a plant patent begins when the applicant files his or her patent application. Plant patent applications are largely analogous to utility patent applications, although there are a few key differences. The following are the main elements of a plant patent application: 

• Title of the invention
• Cross references to any related patent applications
• A statement regarding federally-sponsored research and development (if any) 
• The Latin name of the genus and species of the plant claimed
• Variety denomination
• The background of the application, including the field of the invention (i.e., botanical and a market class of the plant) and a description of the prior art (i.e., the parents of the claimed plant or known plants to which the claimed plant is related) 
• Summary of the invention, in which the major characteristics of the plant are set forth 
• Brief description of the drawing
• Detailed botanical description of the plant
• A single claim
• Abstract of the disclosure 
• Oath or declaration of the inventor
• Drawings 

Of the above elements of a plant patent application, the one that differs most from utility patent applications is the detailed botanical description of the plant. This section of the application must be reasonably complete and preferably prepared after carefully observing the plant through at least one entire growth cycle. The characteristics of the plant should also be described in enough detail to distinguish the new plant from others.

A full detailed botanical description should address at least the following elements of the plant: 

• Genus and species
• Habit of growth 
• Cultivar name
• Precocity (if applicable) 
• Botanical characteristics of the plant’s structures (i.e., buds bark, foliage, etc.) 
• Fertility 
• Any other distinguishing characteristics, such as resistance to disease, drought, cold, dampness, fragrance, color, timing and duration of flowering, etc. 

Failure to include a full description of the plant and to identify its key differences can result in the application being denied. 

How to Obtain a Plant Patent

The first step to obtaining a plant patent is known as the “invention stage,” where the inventor invents or discovers a new or distinct plant. The second stage is the “reproduction stage,” where the inventor (or a co-inventor) asexually reproduces the plant he or she invented or discovered. Ideally, the inventor will keep detailed notes during this process that can be used to adequately describe the plant in the eventual patent application.  

Start With a Plant Patent Search

Once the invention and reproduction stages are complete and adequate information and data have been obtained, the inventor-applicant may begin preparing to file a plant patent application. The ideal first step in preparing a patent application is to perform a plant patent search in the field of the invention. A patent search is a comprehensive search of existing patents and patent literature related to the applicant’s invention. Not only can a plant patent search help to identify similar plants that have already been patented, but it can also help the applicant draft his or her patent application to distinguish it from this prior art. While a patent search is not strictly required for filing a patent application, it can give the applicant a better idea of the existing patent landscape and help save money in the long term as a result of not pursuing patent applications on plants that are clearly unpatentable.    

Patent Prosecution for Plant Patents 

The process of applying for a patent, including a plant patent, is known as patent prosecution. During this process, the applicant’s patent application is assigned to a patent examiner at the USPTO who is an expert in the field of the claimed invention. The patent examiner will then evaluate the invention claimed in the application for its compliance with the general requirements of patentability (i.e., subject matter, novelty, non-obviousness, and disclosure), as well as those specific to plant patents. In most cases, the patent examiner will issue one or more rejections explaining why he or she believes that the application does not meet the requirements. The applicant then has an opportunity to amend the application to bring it in line with the examiner’s concerns. This process continues back and forth until the examiner allows the application or the applicant abandons it. While it is not strictly necessary in most cases to hire a plant patent attorney to prosecute a plant patent application, hiring an attorney can decrease the amount of applicant guesswork significantly and increase the chances of obtaining a patent. 

The Scope of Plant Patent Protection 

A unique feature of patents that distinguishes them from other forms of intellectual property is that patents are negative rights. They do not necessarily give the patent holder the right to make, sell, or use the inventions claimed in them. Rather, they allow the patent holder to exclude others from making, selling, or using the inventions. In the context of plants, a plant patent allows the patent holder to preclude others from asexually reproducing, selling, offering for sale, or using the patented plant or any of its parts in the United States or importing them into the United States. 

Plant Patent Infringement

Patent infringement occurs when a third party makes, uses, or sells the patented invention or an element thereof without the permission of the patent owner. In many cases, patent infringement is unintentional and can be attributed to ignorance of the existence of the patent at issue, although in some cases patent infringement can also be intentional. In the plant patent context, patent infringement occurs when a plant has been asexually reproduced from a patented plant and has the same genetic makeup as the patented plant. While asexual reproduction of a patent plant generally counts as patent infringement, sexual reproduction generally does not. However, even where a plant was sexually reproduced, the patent owner may still allege infringement if the resulting plant is identical or almost identical to the patented plant. The consequences of patent infringement can be severe and involve hefty damages and awards of lost profits to the patent owner. 

Avoiding Plant Patent Infringement 

Avoiding patent infringement is an essential consideration for companies in agricultural and other plant-related industries, and there are several strategies available to minimize the risk of infringement. One of the most effective of these strategies is to obtain a freedom to operate opinion. In a freedom to operate opinion, a plant patent attorney undertakes a comprehensive search of existing plant patents to identify any patents that are similar enough to the company’s products to pose a significant risk of litigation. Once high-risk patents are identified, the attorney can attempt to invalidate them or draft the company’s patent applications specifically to avoid the existing patents. At the very least, a freedom to operate opinion can often shield a company from allegations of willful patent infringement. 

Another highly effective strategy for companies to avoid patent infringement is to license any patents that might prevent the company from practicing its inventions. Since patent infringement occurs only through the unauthorized use of a patented plant, obtaining permission to use a patented invention from the patent owner via a licensing agreement can protect the user from allegations of patent infringement. Patent licensing fees vary according to a number of factors, including the strength of the patent, the uniqueness of the product, the size of the market, and the product’s potential in the market, among others. 

Other Forms of IP Protection for Plants 

Plant patents are not the exclusive form of intellectual property (IP) protection available for plants; in fact, multiple forms of IP protection may be available for the same product.  

Utility Patent Protection for Plants

While plants may qualify for plant patents, they may also qualify for utility patents. These types of patents are typically used for transgenic plants. Unlike plant patents, utility patent-eligible plants may be reproduced either sexually (i.e., from seeds) or asexually. Utility patents may also be used to protect various aspects or traits of a plant rather than the entire plant itself, such as fruits, pollen, genes, and DNA strands. In some cases, utility patent protection may be broader than plant patent protection. For example, a utility patent on a specific trait of a plant covers any and all plants with that trait, even where the plants at issue were developed independently. 

Plant-Related Trademarks 

Trademarks are a form of IP protection for words, names, symbols, logos, slogans, and other marks that identify the source of a good or service and distinguish it from those of others. While plants themselves — as well as variety and cultivar names — cannot be trademarked, plant names may qualify for plant trademark protection when the plant name is unique and has never been used as a cultivar name or in connection with a plant or utility patent. For example, if a nursery uses the trade name “Golden Hour” for a series of daisies with the cultivar name “Shasta,” the term “Golden Hour” could be trademarked, but the cultivar name “Shasta” could not. Unlike patents, plant trademarks remain in force for as long as the plants to which they pertain are being used in commerce. 

Plant Variety Protection (PVP) Certificates

Plant Variety Protection (PVP) Certificates are a form of IP protection administered by the U.S. Department of Agriculture (USDA) under the Plant Variety Protection Act (PVPA). They apply to a wide variety of plants, including those that are sexually reproduced, asexually reproduced, and tuber-propagated. To qualify for a PVP Certificate, the applicant must show that their variety meets the following conditions: 

• The variety is new
• The variety is distinct from other varieties
• The variety is uniform, with variations describable, predictable, and commercially acceptable
• It must be stable, remaining unchanged from one generation to the next

PVP Certificate protection is similar in scope to patent protection in that it prohibits others from selling or marketing the protected variety, importing or exporting the protected variety, sexually or asexually multiplying the variety, using the variety to create a hybrid, and dispensing the variety to others in a form that could be propagated. PVP Certificates remain in force for 20 years (25 for trees and vines). As a condition of PVP protection, applicants must make a deposit of a specimen of their variety in a public depository. 

Protect Your Plant Innovations with a Plant Patent or Other Form of IP Protection

The best way to protect your investment in your plant innovations is with a plant patent. However, protecting plants with patents and enforcing plant patents against infringers can be complex. To maximize your chances of success in obtaining IP protection for plants, please consider speaking to an experienced attorney.