Plant Patent Application Examination

admin — Thu, 16 Jul 2009 20:04:40 +0000

Upon filing, the application is reviewed for formalities in the USPTO Initial Processing Branch where it is assigned a serial number, assembled into a file jacket, and reviewed by application examiners for formal requirements. If found in compliance, the application is then forwarded to the examining group, where it is classified and assigned to a patent examiner. The application is then filed in chronological order, by serial number, to await examination on the merits.

When the application is taken up by the examiner, it is again examined for formalities. Points of concern in this portion of the examination include:

Title. The title must include the market name of the plant. The name of the plant is searched to assure that it has not previously been used to describe a plant of the same botanical or market class, or is confusingly similar to an existing plant sharing the same botanical or market class.
Oath or declaration. The oath or declaration is reviewed to assure that it is of the proper plant format noted above, that it is properly signed and dated, and it includes applicant’s address.
Presence of an Abstract. The abstract is reviewed for length and content. An abstract must be present, and should be on a separate page.
Arrangement of the components of the specification. The application will be reviewed to ensure that each required component of the application is present, that proper headings are presented, and that each component is within the preferred arrangement presented above.

When satisfied that the application is complete and formal, the examiner will examine the disclosure on the merits. This examination will typically include assessment of:

Completeness of botanical description. The description of the plant must be complete to the point of reasonably distinguishing the claimed plant from the most closely related plants, both patented and unpatented. If the claimed plant is of a species which has not been previously patented, the details of the specification will be compared with available descriptions of the species to assure that the specification describes at least one clearly distinguishing trait not previously described as characteristic of the species,or a combination of characteristics which are unusual within the species. If applicant’s description is broad or brief, and such description falls within general descriptions of the species of claimed plant, this will form a bonafide basis of rejection. If major characteristics of the plant have not been botanically described, the disclosure will be objected to (and the claim rejected) by the examiner as incomplete with the reasoning of the examiner forming a basis for objection/rejection.
Novelty of the claimed plant. The description of the claimed plant will be compared with the closest available prior art. Prior art constitutes those plants known and available to the skilled artisan at the time of applicant’s invention. If the disclosure of the application does not distinguish the claimed plant over such previously known and available plants (either patented or unpatented) the claim will be rejected as failing to distinguish the claimed plant over the known plant. A plant patent or published botanical description of the prior art plant will be cited to establish the existence of the referenced plant. Should such a rejection be extended, it becomes incumbent on the applicant to amend the disclosure to include further botanical description of the claimed plant to distinguish over the known plant, if such is possible. Alternatively, or in addition, the applicant may argue how and why the originally filed disclosure factually distinguishes the inventive plant over the plant of the reference.
Obviousness. The plant will be examined based on the standard statutory and court determined tests of obviousness. The factual inquiries that are applied for establishing a background for determining obviousness under Title 35 United States Code, Section 103 include:

Determining the scope and contents of the prior art;

Ascertaining any differences between the prior art and the claim at issue and if there are any in fact;

and Resolving the level of ordinary skill in the pertinent art.

The claimed plant must be indicated to have been suggested by the prior art relied on by the examiner, and must be shown to have been reasonably expected by the reference or references relied on by the examiner before such a rejection can be seen as constituting a prima facie case of obviousness. Normally, if a reasonable prima facie case of obviousness cannot be developed by the examiner, a rejection based on obviousness will not extended. Such a rejection may be extended where the prior art indicates that a known method of breeding, such as mutation induction breeding, using known and effective mutagens in dosages known to work, would reasonably be expected to result in mutation in a specific direction and of a specific magnitude, or where the prior art might suggest reasonable results after attempts to alter a plant through known processes. Examples include the tissue culture of diverse genotypes of a chimera to separate the different genotypes, or the application of colchicine to plant cells to double chromosome numbers.

If the application is formal, complete and determined by the examiner to be drawn to a plant which was both novel and unobvious, the application will be allowed by the examiner and a notice of allowance forwarded to the applicant.

Once allowed by the examiner, the application will be forwarded to the USPTO Issue Branch, where it will await payment of the issue fee by applicant. Upon payment of the issue fee, the application will be published in due course.

Plant Patents — What Rights do they Give?

admin — Thu, 16 Jul 2009 20:01:03 +0000

Grant of a patent for a plant precludes others from asexually reproducing or selling or using the patented plant. A plant patent is regarded as limited to one plant, or genome. A sport or mutant of a patented plant would not be considered to be of the same genotype, would not be covered by the plant patent to the parent plant, and would, itself, be separately patentable, subject to meeting the requirements of patentability. A plant patent expires 20 years from the filing date of the patent application. As with utility applications, when the plant patent expires, the subject matter of the patent becomes public domain.

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Plant Patent Application Examination

Plant Patents — What Rights do they Give?