NATURE AND DURATION OF PLANT PATENTS 

Q. What Is a Plant Patent 
A. A plant patent is a grant by the government to an inventor (or his heirs or assigns) who has "invented" or discovered and asexually reproduced a distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state. This grant gives the plant patent owner 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. 

The purpose of plant patents is to provide incentive for achievement in plant breeding, gardening, and horticulture. 

Q. For How Many Years Does the Plant Patent Protection Last?
A. Beginning when the patent issues and continuing up to 20 years from the application filing date. 

Q. How Does a Plant Patent Differ From Other Kinds of Patents?
A. A plant patent relates to a living plant which as a product of nature obviously cannot be "made" or "manufactured." In a utility patent (regular patent), the grant confers "the right to exclude others from making, using, or selling" the invention; in a plant patent, the grant confers "the right to exclude others from asexually reproducing the plant or selling or using the plant so reproduced, and parts thereof, as described above. \

Q. Is There any Restriction as to Persons Who May Obtain a United States Plant Patent?
A. No. Any person may obtain a plant patent by complying with the provisions of the law. A foreign citizen may obtain a U.S. plant patent by complying with the provisions of the law under exactly the same conditions as a U.S. citizen. 

Q. Can There be Joint Inventors in an Application for a Plant Patent?
A. Yes. If each person had a share in the ideas resulting in the breeding of a new variety of plant, or if, in the case of a found plant, more than one made the discovery, they may be joint applicants for a plant patent.

PLANTS: CATEGORIES, CHARACTERISTICS, REPRODUCTION, EXCLUSION,
AND PATENT CLASSIFICATIONS

Q. What Types of New Plants are Patentable?
A. New and distinct varieties of plants fall roughly into three classes: (1) sports, (2) mutants, and (3) hybrids. In the case of sports, the new and distinct variety results from bud variation and not seed variation. A plant or portion of a plant may suddenly assume an appearance or character distinct from that which normally characterize the variety or species. In the case of mutants, the new and distinct variety results from seedling variation by self-pollination. In the case of hybrids, the new and distinct variety results from seedlings of cross-pollination of two species, of two varieties, or of a species and a variety. In this case, the word "hybrid' is used in its broadest sense. 

Q. May New and Distinct Plants Found Growing in Nature be Patented?
A. Yes. The present law clearly indicates that plant seedlings discovered, asexually reproduced, and proved to be stable, uniform and to have new characteristics distinct from other known plants, are patentable. The law, however, specifically excludes plants found in an uncultivated state. 

Q. What are Some of the Characteristics that may Distinguish a New Variety of Plant?
A. The characteristics that may distinguish a new variety of plant would include, among others: growth or flowering habit; immunity from disease; resistance to cold, drought, heat, wind, or soil conditions; color of flower, leaf, fruit or stems; flavor; productivity, including everbearing qualities in fruits; storage qualities, fragrance; form; and ease of asexual reproduction. 

Q. What is Asexual Reproduction and Why is it Specified in the Plant Patent Act?
A. Asexual reproduction is the propagation of a plant by such means as tissue culture propagation, grafting, budding, cuttings, layering, division, and the like, but not from seeds which is a sexual process. Asexual reproduction is specified in the Act because this method of propagation insures the continuation of the new and distinct characteristics of the plant variety through succeeding generations. In other words, the progeny of the new plant variety will be substantially identical with the parent. A plant discovery is often unique, isolated, and not repeated by nature; a plant patent encourages those who own a plant variety to reproduce it asexually and provide an adequate supply for the public. 

Q. What are Tuber Propagated Plants?
A. The term "tuber" is used in its narrow horticultural sense as meaning a short, thickened portion of an underground branch. It does not cover, for instance, bulbs, corns, stolons, and rhizomes. The only plants covered by the term "tuber propagated" in the Act (and therefore not patentable) are the Irish potato and the Jerusalem artichoke. 

Q. What Limitation is Placed by the Patent Office on the Term "Plant"? 
A. The term "plant" in the Plant Patent Act has been interpreted to mean "plant" in the ordinary and accepted sense "in the common language of the people" but not in the strict scientific sense. It excludes bacteria, but includes fungi.

THE APPLICATION

Q. What are Some of the Prerequisites for Filing an Application for a Plant Patent?
A. The new plant variety:

1. Must have been asexually reproduced by the applicant;

2. Must not have been introduced to the public nor sold or offered for sale or in public use more than one year before filing of the application;

3. Must have originated either (a) as a result of some act by the applicant, e.g., cross-pollination, treatment, selection and/or breeding efforts; (b) as a seedling found by the applicant in a cultivated area; or (c) as a sport or mutation found by the applicant. 

Q. How Does One Apply for a Plant Patent?
A. By making the proper application to the Commissioner of Patents. Since the preparation and prosecution of an application are highly complex proceedings, the Patent Office advises inventors to employ a patent attorney or agent who is registered in the Patent Office. An attorney or agent not registered in the Patent Office may not prosecute applications. A U.S. plant patent application must be filed in the name of the "inventor" but the application and patent may be assigned to someone else who will then become the owner of the application and patent. 

Q. What comprises a plant patent application?
A. A plant patent application is a written document comprising a petition, specification and claim describing and defining the new plant, an oath or declaration, a "drawing", generally in the form of one or more color photographs, and payment of the filing fee. 
When color of the flower or other plant part is a distinguishing characteristic of the new variety, two copies of the a color photograph showing the distinguishing features(s) must be submitted. 

The oath or declaration required of the applicant, in addition to the averments required in the conventional oath or declaration for other patents, must state that the applicant has asexually reproduced the plant. Where the plant is a newly found plant, the oath or declaration must also state that it was found in a cultivated area. 

The description of the plant variety given in the specification should be as reasonably complete and detailed as possible and should be expressed in botanical terms and form followed in standard botanical textbooks. It is mandatory that the specification include the origin or parentage of the plant sought to be patented and the geographic location and manner the plant has been asexually reproduced (cuttings, buddings, grafting, etc.). When color is a distinctive feature of the plant, the color should be positively identified in the specification by reference to a designated color atlas or dictionary. The Royal Horticulture Society Colour Chart is preferred. When the plant originated as a newly found seedling, the specification must particularly point out the location and character of the area where the seedling was discovered to establish that it was not found in an uncultivated state. 

Q. Is it Necessary to Submit Specimens of the Plant Variety, Its Flower or Fruit When Filing the Application?
A. No. Specimens of the plant variety, its flower or fruit should not be submitted unless specifically required by the Patent Office examiner. 

Q. After the Application is Considered by the Patent Office, How is the Applicant Advised of Its Decision?
A. The applicant is notified in writing of the examiner's decision by an "office action" which is mailed to the applicant's attorney or agent. The reasons for any adverse action or any objection or requirements are stated in the action. If this office action is adverse and the applicant wishes to continue the effort to obtain a patent, a response to this action must be mailed within the time allowed (usually 3 months). Applicant may request re-examination or reconsideration, with or without amendment. 

If on the first examination or the re-examination of the application, or at a later stage during the prosecution of the application, the application is found to be allowable, the applicant is sent a notice of allowance. The applicant will then be issued a patent upon payment of the issue fee.

HOW TO OBTAIN FURTHER INFORMATION

Q. How May One Obtain Further Information as to Patent Procedure, Fees, Etc. 
A. By contacting Mr. Vincent Gioia at Christie, Parker & Hale, LLP, 5 Park Plaza, Suite 1440, Irvine, California 92614, United States of America, Telephone: (949) 476-0757; Facsimile: (949) 476-8640