35 USC 102(b)
Update, Oct 8, 2002
From the onset of the 35 USC 102(b) problem caused by the revisionist interpretation of the law by The U.S.
Patent and Trademark Office (PTO) through the plant patent examiners, we at plantpatent.com have been urging
practitioners and the plant industry to overturn this PTO policy by appeal to the courts. However, industry
leaders and NAPPO have been counseling and suggesting that a preferred approach to correct this attack on plant
breeders is to obtain corrective legislation. This effort resulted in introduction of H.R. 5119 by Congressman
Darrel Issa (R-Calif). The purpose of the proposed legislation is to amend the plant patent provisions of the
Patent Act by adding a subsection that would, in effect, provide a 10-year grace period for applying for plant
patents. Unfortunately, as predicted, this attempt will not succeed easily, if at all.
At a subcommittee hearing September 19, 2002, serious opposition was expressed, some even from unexpected
sources. The AIPLA, an organization of patent lawyers, questioned the need for such legislation and said the
supporters of the bill should exhaust their administrative and judicial remedies for relief by appeal to the
U.S. Court of Appeals for the Federal Circuit. The AIPLA representative, Vincent Garlock, deputy executive
director, also said that H.R. 5119 would put plant patent applicants in a better position than other patent
applicants and "this is a situation faced equally by applicants for utility patents, and accordingly, does not
appear to justify the proposed special treatment".
Additional opposition to the legislation was raised by the International Center for Technology Assessment's
Patent Watch (CTA). The organization's director, Peter DiMauro, said the CTA is concerned about the impact plant
protection has on U.S. Agriculture and the world's food supply. He said this law would amount to a 10-year
patent term extension. DiMauro also said that "every time plant intellectual property rights are amended it
expands the scope of protection and rights of corporate breeders, at the expense of farmers, biological
diversity and society". He also said the PTO was correct in it's new interpretation of 35 USC 102(b).
It's obvious the proposed law will not have smooth sailing through Congress. We continue to urge the industry to
take it's case to the Courts. If you wait for a new law, plant breeders will lose an opportunity to protect new
varieties because of other problems than the ridiculous PTO position on 35 USC102 (b), such as statutory bar
prior use and/or sale in the US, will be a problem that can't be overcome.
35 USC 102(b)
Update (Dear Commissioner Rogan), December 20, 2001
We are very fortunate that former Congressman, Mr. James Rogan, has been appointed Commissioner of Patents at the U.S. Patent and Trademark Office (PTO).
The PTO continues to harass the plant industry with "102(b)" rejections and requests for information under 37 CFR 1.105 whereby the PTO requires applicants to provide information that will enable them to make such rejections. These issues arise in almost every plant patent application with a foreign applicant and in any case the PTO Examiner believes has a foreign origin because of the likelihood of an earlier published PBR application or certificate. So far, I am not aware of any appeal of a final rejection on this ground being filed, though I have heard rumors that there is a case on appeal. We can only hope that the appeal, if any, is being advanced by an advocate of plant breeders rights and not by an appeaser of the PTO just going through the motions.
Upon learning of Mr. Rogan's confirmation and that he has taken office, I wrote to him to present our views of these issues before he met with those that people less convinced of error by the PTO and more willing to compromise away rights of plant patent applicants and owners. A copy of my communication to Commissioner Rogan and of his prompt and gracious reply appear below.
Please continue to check on our web site www.plantpatent.com
for further updates and information. Also, we welcome input and information from other sources that we can pass along.
my communication to Commissioner Rogan
Dear Commissioner Rogan,
As a supporter of your campaign for re-election living outside your district in Orange County, I was bitterly disappointed by the election outcome. However, as a patent attorney I see a silver lining in your appointment to take charge of the U.S. Patent and Trademark Office. I have great respect for your integrity and intelligence and feel confident that you will handle the challenges of your new duties very well.
The purpose of this e-mail is to describe some relatively new policies being implemented by the Patent and Trademark Office (PTO) with respect to prosecution of plant patent applications that have enormous and damaging consequences to the plant industry both domestic and foreign. I respectfully request that you carefully and fully consider these damaging PTO practices that are being implemented by patent examiners at the instruction of their superiors and those that have been in charge of the PTO prior to your arrival. I will try to explain these matters in as short a manner as possible recognizing the great demands that must be being placed on your time as you take office. However, I understand that meetings have been scheduled with you about this subject next week and I believe it is imperative to make this presentation as an advocate for the plant industry before you here from some of the PTO willing accomplices that are fearful of antagonizing those in positions of authority at the PTO.
The PTO is now issuing rejections of US plant patent applications where a prior publication exists, such as a catalog, Plant Breeders Rights application or other printed publication, that describes or even merely mentions the new variety, more than one year prior to the US patent application, coupled with availability of the plant, even in another country, more than one year prior to the application filing. This is not a case of prior use or sale in the U.S. under 35 USC 102, but of purported violation of 102(b) because of a prior publication. This new revisionist interpretation of existing law by the PTO is contrary to the 1962 Appeals Court decision
In re Legrice, 133 USPQ 365. The Legrice decision has been the settled law that a printed publication is not a valid reference because it cannot itself enable anyone to produce the plant described.
However, the PTO is now relying on a 1992 decision by the PTO Board of Appeals
Ex parte Thomson, 24 USPQ 2d, 1618, to support their new view of the existing law. Interestingly, this case has been around for nine years but only now is considered to support a rejection under 35 USC 102(b). The ruling in the
Thomson case applied to a utility patent application, not a plant patent application, for a new cotton variety. The PTO Board of Appeals held that since the variety was described in a printed publication more than one year prior to the application, and seeds of the variety were available in Australia, the combination satisfied the prohibition against patenting set forth is 35 USC 102(b). Very curious reasoning.
Historically, 35 USC 102(b) has been regarded as applicable where a single reference, e.g. a publication,
fully describes the invention. In such a case, the publication is said to "anticipate" the invention claimed in the patent application. A long line of court decisions have held that a publication does not describe an invention if the disclosure does not enable someone to practice the invention. For this reason the Board of Appeals in the
Thomson case had to find something in addition to the publication to use to reject the application and settled on the "availability" of seeds, even though out of the country, to consider the publication "enabling". You can decide for yourself if this makes any sense. Here is what 35 USC 102(b) says:
"A person shall be entitled to a patent unless --
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale
in this country, more than one year prior to the date of application for patent in the United States,.."
As was mentioned, the law supported by numerous court decisions, is that for a publication to be a statutory bar to patenting by anticipation under 35 USC 102(b), it must be sufficient in itself, with nothing more, to enable someone to practice the invention. It is possible for a utility invention to be disclosed in a publication in such a manner so as to enable the invention to be reproduced, but a publication alone does not enable reproduction of a plant invention, and a mere written description cannot enable anyone to reproduce a plant.
The impact of this new rejection of plant patent applications by the PTO is very far reaching. Here are a few of the new issues that are involved:
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To comply with duty of disclosure rules so as to avoid accusations of fraud and possible invalidation of an issued patent, applicants will have to disclose and provide copies of all publications of the "invention" to the PTO, (indeed, the PTO is requiring applicants to submit this information under 37 CFR 1.105 and then rejects patent applications based on applicant's submission),
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The affect of this new interpretation of 35 USC 102(b) on existing plant patents is unknown, but we are informed that high level persons at the PTO believe that 70% of issued plant patents are invalid because of this new PTO re-interpretation of the law in place for the last 50 years, (this is incredible, consider the impact on the industry because of this alone), and
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It is not clear how much of the invention, i.e. how many plants, will be considered to be sufficient and under what circumstances, for purposes of making the rejection.
Although some professionals may disagree, I believe the rejection should be reversed on appeal. However, it may be necessary to continue the case passed the Board of Appeals to the appellate court (the Court of Appeals for the Federal Circuit) unless you,
Commissioner Rogan, reverse this misguided practice. The situation can be corrected by new legislation but this will take some time and considerable damage will be done while waiting for new laws to be passed. Already some companies are reacting by filing numerous plant patent applications before evaluations are completed at substantial extra cost since many of the applications will be dropped after trialing is completed. Others are thwarted by plant quarantine requirements for imported plants.
Another problem with the legislative approach is that it is likely, in an effort to appease the PTO leadership prior to your taking office, compromises will be reached that destroy rights of plant breeders to which they have been entitled for the past 50 years before the new policies were created and implemented. Moreover, this will likely result in a change in the law that is unnecessary and unfavorable to plant patent applicants and owners.
There is also the real issue as to whether the change in PTO policies are in violation of the Administrative Procedures Act (APA) for failure to comply with the APA's requirements when the PTO abruptly and without due notice to those who may be affected by a change in procedure, modified their interpretation of 35 USC 102(b).
Commissioner Rogan, because of the serious loss of rights to their clients, some patent
practitioners stand ready to take judicial action against the PTO as soon as possible. Please understand that any court actions filed are, of course, not intended to complicate your assumption of office but are due to the exigencies of the deadlines involved which may require prompt action in some cases. We can only hope that if such actions are filed, you will not summarily refer them to others in the PTO without personally reviewing the merits of each case.
It would have been my preference to try to meet with you personally about these matters rather that to subject you to this long e-mail but unfortunately health problems prevent me from doing so. Nonetheless, knowing you as I do, I believe you will consider what I have attempted to explain and that you will do what you think is right.
Sincerely,
Vincent Gioia
PTO Registration No. 19959
and his reply to me
Dear Vince, Thank you for your note of good wishes and for raising the issue in so comprehensive a fashion. I am asking my chief of staff to look into the issue you raised and report back to me.
With best regards,
Jim Rogan
35 USC 102(b) Update,
September 24, 2001
The first thing to report is that we continue to receive rejections under 35 USC 102(b) from the U.S. Patent an Trademark Office (PTO). The rejections are generally preceded by a request for information under 37 CFR 1.105 whereby the PTO requires applicants to provide information to enable the PTO to issue a 35 USC 102(b) rejection under their current policy. This problem, devastating to the plant industry, thus continues.
Secondly, we regret to have to report that the previously mentioned expected challenge to the PTO policy under the Administrative Procedure Act (see last update) has been abandoned by the attorney that previously advocated this approach. The reason is unclear but we can speculate about the basis for this "surrender". I strongly disagree with this capitulation.
On of the strongest advocates for the plant industry, Pat Ballew, had a meeting with the PTO in August. The PTO repeated their position implementing their interpretation of the law and threatened to hold applications "abandoned" where no reply to the request for information under 37 CFR 1.105 is provided. Mr. John Doll, PTO Group 1600 Director, acknowledged that the PTO "jerked the rug out from under the industry", but expressed no remorse. Moreover, Doll pointed out that in view of the PTO position seventy percent (70%) of issued U.S. plant patents will be rendered invalid and unenforceable. How's that for arrogance from an incompetent bureaucrat. A test case is being prepared to present to the Board of Patent Appeals and Interferences, the PTO's internal appeal department. This is a necessary step before appealing the case to the courts. It is expected that the Board of Appeals will uphold the rejection but will be reversed by the courts.
A Petition has been filed with the Commissioner asking that the patent examiners be directed to discontinue objections and rejections under 102(b) because the PTO did not follow correct rule making process. Although it is expected the petition will be denied, the denial will provide a basis for appeal to the courts on this issue.
We also want to call attention to a recent CIRCULAR LETTER issued by CIOPORA on this subject. A copy appears below.
CIRCULAR LETTER
Re. : The risk of early disclosure in US plant patent applications
Dear CIOPORA Member,
In view of the recent appalling and hideous events that struck the USA and of the resulting paralysis in air traffic, we have decided to cancel our projected visit to the US PTO in Washington DC and to reschedule it to a later date.
This should give you more time to provide us with relevant information as requested in our last circular letter of August 31 in case you have anything of interest that might help us in our efforts to reverse the present interpretation, by USPTO, of 35 USC 102(b).
Meanwhile we would like to keep you abreast with some recent developments in July and August concerning the above problem.
* The opinions of US lawyers as to the outcome of an appeal based on the legal merits of the current rejections by the PTO continue to differ and are an obstacle to consensus of action;
* The representatives of NAPPO and their US lawyers have, for some time, been considering an action based on the fact that US PTO officials would not have respected the requirements of the APA (Administrative Procedures Act) when they abruptly (without the necessary notice to those who may be affected by a change of procedure) modified their interpretation of 102(b). Such an intermediate action seemed to have
everyone's agreement. However a more recent report from NAPPO showed that it had doubts as to the potential success of that kind of action.
* On August 10, 2001, a meeting was held between some representatives of Nappo, lawyers acting on behalf of American breeders and officials of the PTO. The outcome of that meeting was not positive since the PTO maintained its position as follows :
-
foreign publication of a printed description (although
"non-enabling" as such) combined with foreign commercial use of the variety more than
one year prior to US filing is considered as a bar, under 35 USC 102(b), to patentability in the US;
-
that interpretation is NOT NEW according to PTO officials; they can only implement it more easily thanks to the recently enacted rule 37 C.F.R 1.105 enabling them to request information about foreign marketing!
-
The landmark decision in re Le Grice is limited to the
"non-enabling" character of a printed publication but never addressed the aspect of foreign commercial use of a variety
All of the above is not very encouraging. However, we believe that a direct intervention of an international association like CIOPORA with the US PTO officials is more than ever necessary. Indeed some reported reactions of the PTO officials during previous meetings do show that they are responsive to outside pressure.
Also, it is our firm belief that, contrary to what the PTO asserts, the US officials actually changed their course of proceeding although they try to pretend that this was their long-standing practice.
We shall therefore maintain our action including our projected intervention with the US PTO
at the earliest possible date (with due allowance for the current events in the US), parallel action on APA basis and parallel action of our members on the legal merits of the problem.
We are committed to exercising our best efforts to help our members in that difficult battle over the
^%*@&#^&^$# issue. If that reviewed attitude of the PTO should unfortunately prevail, this would mean the nullification of hundreds of US plant patents with the consequences that everyone can imagine.
We shall continue to keep you posted. Please reciprocate by sending us any information which may benefit our
breeders' community.
Sincerely,
René Royon
Secretary General
Patent
Office Policy Update, July 22, 2001
The U.S. Patent and Trademark Office (USPTO) continues to issue rejections under 35 USC 102(b) in plant patent applications that the USPTO has reason to believe are directed to varieties which are mentioned in a printed publication, such as prior plant breeders rights, coupled with availability of plants anywhere in the world. However, the furor over this sudden new policy continues to increase and various challenges are being devised. A recent proposal is to make a procedural challenge based on the failure of the USPTO to give proper notice and provide opportunity for comment before enacting regulation. According to this argument the 102(b) policy change by the USPTO amounts to a substantive rule change for which the Administrative Procedures Act requires notice to the public in advance and an opportunity for public comment. Obviously, the USPTO did neither.
Many of us still believe the best approach is a frontal attack appealing the 102(b) rejections to higher judicial authorities but the procedural challenge is also useful and if implemented as opposed directly to the Court and requesting a preliminary injunction, would have the possibility of requiring the USPTO to stop its policy more quickly, if successful.
In the meantime, we are informed that some of our group have had direct contact with officials in the USPTO on this issue and presented some of the arguments in opposition to the USPTO 102(b) policy. Among the arguments noted was the fact that U.S. plant quarantine laws require periods of time that would make it impossible to comply with the USPTO 102(b) policy. The officials appeared to be unaware of this. As a result, it was stated that the USPTO requested an opportunity to review our entire argument in detail. Another meeting was then tentatively set for August 10, 2001 in Washington D.C. During the meeting it was also mentioned that at least one client had given authorization to prepare suit against the USPTO for violation of the Administrative Procedures Act and for violation of the equal protection clause of the U.S. Constitution. The USPTO officials said such a move would be perceived as a "hostile act" by the USPTO, and that he hoped the USPTO would be given an opportunity to clean house internally before suit in Federal Court was brought.
It's really something for the USPTO to say that trying to oppose the ridiculous 102(b) policy would be considered a "hostile act" but not surprising, after all, government officials often think they can do anything they want and the public must accept it.
35 USC 102(b) Update May 26, 2001
The United States Patent and Trademark Office (USPTO) continues to apply their revisionist interpretation of 35 USC 102(b) wherever possible, which means against any U.S. plant patent application for a variety believed to have originated outside the United States because of the possibility a prior
breeder's rights application may be filed earlier in another country. Many of us continue to believe this is legally wrong but, unfortunately, some attorneys
believe the USPTO is correct. It is difficult to understand why plant owners would entrust representation on this issue to attorneys that are not committed to the principle that the USPTO is wrong on this issue. Nonetheless, as you will see from the message from Craig Reggelbrugge of the National Association of Plant Patent Owners (NAPPO) reproduced below, those sympathetic to the incredible position by the USPTO are given more attention than some of us think is appropriate. This may very well result in agreements by NAPPO to change the law unnecessarily and unfavorable to plant owners.
I strongly support the arguements of Pat Bellew whose name and e-mail address appear below in Craig's report. Anyone seeking assistance of a strong opponent of the USPTO regarding the 35 USC 102(b) issue should contact Pat or someone that believes as he does.
"We wanted to provide you a quick update on the 102(b) situation. To date,
many members have received office actions from the Patent & Trademark Office
based on the change in policy relative to the applicability of Sec. 102(d). Based on that new interpretation, the PTO appears intent upon rejecting
applications for plant varieties that were both described in a printed publication and available in the U.S. or a foreign country for more than one
year before date of application for a U.S. plant patent. The implications of this policy change are very serious for many domestic and foreign
breeders. The financial implications will be disastrous for many.
NAPPO has been exploring administrative, legal, and legislative remedies to
the current situation. From a legal perspective, if final rejections are received, some applicants may choose to appeal their rejections to the Board
of Patent Appeals and Interferences, and ultimately to the Court of Appeals for the Federal Circuit. However, to be candid, there are diverse views in
the legal community as to the PTO's legal basis for the policy change, and the likelihood that a court challenge will prevail.
On the legislative front, the NAPPO Board and an ad-hoc group of advisors
are discussing options. Again, there are varying opinions as to the "ideal" versus "optimal" legislative remedy. However, it is generally believed that
we need the Administration to support a legislative effort, or at least to remain neutral. Finally, efforts to work with the Administration to
encourage a policy change are underway. A number of players are involved in those efforts. We believe that the current situation is bad agricultural
policy, and has needlessly created an international incident. Those pressures should work in our favor.
Meanwhile, NAPPO would like to share what ideas we can with affected
members. Toward that end, NAPPO member patent attorney Pat Ballew, with the firm Stratton Ballew PLCC, has developed a detailed response to the PTO's
office actions on a number of fruit tree patent applications. Pat has shared a final draft of his pro forma response with NAPPO, and we are
sharing it with members for informational purposes only. We know of members with varieties that were NOT both publicly available anywhere in the world
and described in a printed publication more than one year prior to making application for a U.S. plant patent, and they are responding to the PTO
accordingly. However, if you are not that fortunate, you may wish to look over the arguments offered by Pat. If you have questions? Pat may be
reached at: Phone 509-453-1319, or
E-mail: pballew@strattonballew.com
Again, no specific endorsement is intended, and there may be varying points of view on these legal arguments.
If others wish to share, we'll forward their thoughts.
Stay tuned for more on this matter! cjr"
Craig J. Regelbrugge
Sr. Director of Government Relations, ANLA
Administrator, Nat'l Association of Plant Patent Owners
1250 I St. NW #500
Washington, DC 20005
202/789-2900; 202/789-5980 ext 3013 direct
202/789-1893 fax
cregelbrugge@anla.org | www.ANLA.org
It may be useful to Craig and NAPPO to have the views of anyone interested in this subject. He may be contacted at the e-mail address above.
35 U.S.C. 102(b), April 9, 2001
The U.S. Patent and Trademark Office continues the new
policy of refusing plant patents for varieties which have been described, even
briefly, in a printed publication and plants of the variety were available to the
public more than one year prior to the filing date of the U.S. plant patent
application. In order to make sure this information is disclosed to the Patent
Office, plant patent Examiners are requiring applicants to provide this
information to comply with the duty of disclosure obligations under the Code of
Federal Regulations (CFR). Failure to supply the information may result in
issuance of an invalid patent. In other words, the Patent Office requires patent
applicants to provide information that will enable the Patent Office to deny a
patent.
Many patent lawyers believe the new Patent Office policy is not correct.
However, to reverse this policy it will be necessary to change the plant patent
law by Congress, or appeal any Patent Office refusal to the Board of Appeals in
the Patent Office and to the courts if necessary.
35 USC 102(b) Update, February
12, 2001
After "reconsidering" and withdrawing the revisionist interpretation of 35 USC 102(d) which caused havoc in the plant industry because of the devastating affect on protection of plant varieties originating outside the US, the U.S. Patent and Trademark Office ("PTO") tossed another, and larger, bomb at the industry.
The PTO is now issuing rejections of US plant patent applications where a prior publication exists, such as a catalog, Plant Breeders Rights application or other printed publication, that describes the new variety, more than one year prior to the US patent application, coupled with availability of the plant, even in another country. This new revisionist interpretation of existing law by the PTO is contrary to the 1962 Appeals Court decision
In re Legrice, 133 USPQ 365. The Legrice decision has been the settled law that a printed publication is not a valid reference because it cannot itself enable anyone to produce the plant described.
However, the PTO is now relying on a 1992 decision by the PTO Board of Appeals
Ex parte Thomson, 24 USPQ 2d, 1618, to support their new view of the existing law. Interestingly, this case has been around for nine years but only now is considered to support a rejection under 35 USC 102(b). The ruling in the
Thomson case applied to a utility patent application, not a plant patent application, for a new cotton variety. The PTO Board of Appeals held that since the variety was described in a printed publication more than one year prior to the application, and seeds of the variety were available in Australia, the combination satisfied the prohibition against patenting set forth is 35 USC 102(b). Very curious reasoning.
Historically, 35 USC 102(b) has been regarded as applicable where a single reference, e.g. a publication,
fully describes the invention. In such a case, the publication is said to "anticipate" the invention claimed in the patent application. A long line of court decisions have held that a publication does not describe an invention if the disclosure does not enable someone to practice the invention. For this reason the Board of Appeals in the
Thomson case had to find something in addition to the publication to use to reject the application and settled on the "availability" of seeds, even though out of the country, to consider the publication "enabling". You can decide for yourself if this makes any sense. Here is what 35 USC 102(b) says:
"A person shall be entitled to a patent unless --
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale
in this country, more than one year prior to the date of application for patent in the United States,.."
As was mentioned, the law supported by numerous court decisions, is that for a publication to be a statutory bar to patenting by anticipation under 35 USC 102(b), it must be sufficient in itself, with nothing more, to enable someone to practice the invention. It is possible for a utility invention to be disclosed in a publication in such a manner so as to enable the invention to be reproduced, but a publication alone does not enable reproduction of a plant invention.
The impact of this new rejection of plant patent applications by the PTO is very far reaching. Here are a few of the new issues that are involved:
-
To comply with duty of disclosure rules so as to avoid accusations of fraud and possible invalidation of an issued patent, applicants will have to disclose and provide copies of all publications of the "invention" to the PTO,
-
The affect of this new interpretation of 35 USC 102(b) on existing plant patents is unknown,
-
It is not clear how much of the invention, i.e. how many plants, will be considered to be sufficient and under what circumstances, for purposes of making the rejection, and
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Do applicants have an obligation to inform the PTO regarding availability of plants as part of the duty of disclosure (probably yes).
Although some professionals may disagree, I believe the rejection should be reversed on appeal. However, it may be necessary to continue the case passed the Board of Appeals to the appellate court (the Court of Appeals for the Federal Circuit). The situation can be corrected by new legislation but this will take some time and considerable damage will be done while waiting for new laws to be passed. Already some companies are reacting by filing numerous plant patent applications before evaluations are completed at substantial extra cost since many of the applications will be dropped after trialing is completed. For now the best course of action may be to vigorously contest such rejections if you believe as I do that this practice by the PTO is very wrong.
We Welcome Your Feedback by E-mail:
vincent@plantpatent.com
Sec. 102(d) Update, January 26, 2001
The National Association of Plant Patent Owners (NAPPO) and counsel met yesterday with Q. Todd Dickinson, Undersecretary of Commerce and Commissioner of Patents and Trademarks, and two other high-level Patent & Trademark Office (PTO) staff. The purpose of the meeting was to seek high-level commitment to resolving the Sec. 102(d) issue.
NAPPO received verbal confirmation that the PTO plans to reverse the harmful position taken October 1, 2000, based on the persuasive legal arguments NAPPO submitted late last year in a "test case." Applicants who have had
pending plant patent applications rejected should be receiving letters withdrawing the rejections. Because the exact timing of those letters is not clear, and the PTO does not plan to formally announce the policy change, NAPPO asks members to alert NAPPO as soon as anyone receives such a "rejection withdrawal" letter.
While it appears a victory has been won, there remains a potential problem having to do with Sec. 102(b) of the law. That section states "A person shall be entitled to a patent unless... (b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for a patent in the United States."
The PTO is prepared to change its view of how a printed publication impacts the patentability of plant inventions. The PTO seems to be now prepared to reject a plant patent application if the claimed variety is described in a
publication and publicly available more than one year prior to the plant patent application filing date, even in a foreign country. The best approach to fix this potential problem will be for Congress to pass favorable legislative language.
In the meeting, NAPPO proposed collaborating with the PTO on legislation that would protect the interests of those seeking U.S. plant patents. The idea was well-received, and the NAPPO Board and membership will discuss the issue further with it's patent attorney members (one of whom is Vincent Gioia) in the near future. This is seen as a possible opportunity to make the plant patent system more consistent with UPOV-type breeders' rights available in many other countries.
We Welcome Your Feedback by E-mail:
vincent@plantpatent.com
NAPPO needs help in meeting it's fundraising goal to complete this critical battle. If you have not yet made a contribution, please do so as soon as possible.
The U.S. Patent and Trademark Office ("PTO") has recently changed their interpretation of U.S. Patent law [35 U.S.C. 10(d)] in a way that drastically affects U.S. plant patent applications.
Although the law has not changed, plant patent application Examiners are now taking the position that if a U.S. plant patent application is filed even one day after formal grant of a foreign UPOV plant breeders' right directed to the same plant cultivar, then there is an absolute forfeiture of the right to obtain a U.S. plant patent.
Also, according to the new PTO position, in the event that grant of the UPOV right took less than one year (which is unlikely), then the deadline under 35 U.S.C. 102(d) for filing the corresponding plant patent application is the first anniversary from the filing of the UPOV application.
In view of this new practice by the U.S. Patent Office, we strongly urge you to file U.S. plant patent applications within one year from the date of filing or initiation of the first registration proceeding for UPOV protection of the same cultivar. Existing pending plant patent applications may receive rejections based on the new PTO examination practice and it may be necessary to appeal such rejections to the PTO Board of Appeals.