Patent Basics for the Non-Practitioner: Part IV of IV: PLANT PATENTS

October 11, 2007 | By: Thomas F. Zuber, Esq.

Plant patents may issue for plants that are stable and reproduced by asexual reproduction, and not a potato or other edible tuber reproduced plant. More specifically, 35 U.S.C. § 161 states:

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 therefore, subject to the conditions and requirements of this title.

The provisions of the United States Code relating to patents for inventions also apply to patents for plants, except as otherwise provided.  35 U.S.C. § 161.  In other words, a plant patent must also satisfy the requirements of patentability noted above in regard to utility patents.  One notable exception provided for is that a plant patent will not be declared invalid for noncompliance with the enablement requirement of 35 U.S.C. § 112 so long as the description of the plant is as complete as is reasonably possible.  35 U.S.C. § 162.

In sum, a plant patent requires:

· That the plant was invented or discovered and, if discovered, that the discovery was made in a cultivated area;
· That the plant is not a plant which is excluded by statute, where the part of the plant used for asexual reproduction is not a tuber food part, as with potato or Jerusalem artichoke;
· That the person or persons filing the application is/are him/her/those who actually invented the claimed plant (i.e. the person or persons who discovered or developed and identified or isolated the plant, and asexually reproduced the plant);
· That the plant has not been sold or released in the United States of America more than one year prior to the date of the application;
· That the plant has not been enabled to the public (i.e.: by description in a printed publication in this country more than one year before the application for patent with an offer to sale, or by release or sale of the plant more than one year prior to application for patent);
· That the plant be shown to differ from known, related plants by at least one distinguishing characteristic, which distinguishing characteristic is more than a difference caused by growing conditions or fertility levels, etc.; and
· The invention would not have been obvious to one skilled in the art at the time of invention by applicant.

One issued, a plant patent lasts for twenty years from the date of filing the application.  A plant patent grants the patent holder the right to exclude others from asexually reproducing the plant, 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.  35 U.S.C. § 163.

* The author, Thomas F. Zuber, Esq., is a partner of Zuber & Taillieu LLP, specializing in intellectual property transactions.

** This article is for informational purposes only.  This article does not constitute legal advice and, in the absence of a fully executed retainer agreement, no attorney-client relationship exists between its reader and Zuber & Taillieu LLP or any of its attorneys.  For more information, please read our disclaimer.

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