• Identify what types of plants are patentable under the provisions of 35 U.S.C. 161.
• Present the legal requirements for attaining a plant patent in terms which can be understood by attorneys, plant breeders, growers and gardeners.
• Present the formal requirements of an application for plant patents.
• Assist in gathering and organizing sufficient information for preparation of a plant patent application.
• Summarize the typical steps which are performed by the Patent and Trademark Office.
• Indicate where further information can be attained.

Because there are two steps which constitute invention in plant applications, there may be more than one inventor. An inventor is any person who contributed to either step of invention. For example, if one person discovers a new and distinct plant and asexually reproduces the plant, such person would be a sole inventor. If one person discovered or selected a new and distinct plant, and a second person asexually reproduced the plant and ascertained that the clone(s) of the plant were identical to the original plant in every distinguishing characteristic, the second person would properly be considered a co-inventor. If either step is performed by a staff, every member of the staff who performed or contributed to the performance of either step could properly be considered a co-inventor. Thus, a plant patent may have a plurality of inventors. However, an inventor can direct that the step of asexual reproduction be performed by a custom propagation service or tissue culture enterprise and those performing the service would not be considered co-inventors.

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.

The Application

While the formal requirements of an application for plant patent will be outlined below, anyone seeking a patent should contact the USPTO just before filing of an application, to ensure that new requirements have not been made, and that the fees filed with the application are sufficient, as such are subject to change. Filing an application without sufficient fees may result in loss of filing date and/or having to pay an additional fee (a surcharge) to reactivate the application. Filing an application which is not complete may result in the application not being accepted by the PTO, and thus may result in the loss of intellectual property rights by the applicants. Applications which are not formal when filed may also result in loss of rights. Current filing, search, and examination fees for 35 U.S.C. 161 Plant Patent Applications may be found at: http://www.uspto.gov/web/offices/ac/qs/ope/fees.htm. (Fees are subject to change.)

Legal Representation

Those seeking a plant patent should be aware that they may prosecute their applications through the services of a registered patent attorney/agent. While the PTO will not help in the selection of an attorney/agent, one seeking a plant patent should select an attorney/agent who is registered to practice before the PTO.

With some exceptions, a patent application for a plant is subject to the same requirements as a utility application. Title 37 of the Code of Federal Regulations, Section 1.163(a)) requires that the specification must contain as full and complete a botanical description as reasonably possible of the plant and the characteristics which distinguish that plant over known, related plants. The components of a plant application are similar to those of a utility application and are covered by the following guidelines which illustrate the preferred layout and content for patent applications. These guidelines are suggested for use by one filing a plant patent application:

Arrangement of the Specification

The following arrangement is preferred in framing the specification and, except for the title of the invention, each of the lettered items should be preceded by the headings indicated below as tailored for application for a plant filed under 35 U.S.C. 161:

(a) Title of the Invention. The title of the invention may include an introductory portion stating the name, citizenship, and residence of the applicant.

• A utility application from which the claimed plant is the subject of a divisional application.
• A continuation (co-pending, newly filed application) to the same plant filed when a parent application has not been allowed to a sibling cultivar.
• An application not co-pending with an original application which was not allowed.
• Copending applications to siblings or similar plants developed by the same breeding program, etc.

(c)Statement regarding Federally-sponsored research and development (if any).

(d)Latin name of the genus and species of the plant claimed.

(e)Variety denomination.

(g) Summary of the Invention. In the Summary section, the major characteristics of the plant are set forth, and they may be presented as a list of novel characteristics, or by a narrative description of the trait or traits of the plant which set the plant apart from all other plants of the botanical class and the market class of plant.

(h) Brief Description of the Drawing. Under this heading a separate brief description should be presented to describe the contents of each view or figure of the drawing. The drawing in a plant patent must show the plant with the most distinguishing characteristics of the plant in sufficient scale to be identifiable when reduced by as much as 50%. Drawings should be photographic, and must be in color where coloration is a distinguishing characteristic. Where characteristics of foliage, bark, flowers and/or fruit are distinguishing, such plant parts should be clearly depicted in one or more figures of drawing. Figures of the drawing need not be numbered unless specifically required by the examiner. Drawings must be mounted to satisfy the same requirements as drawings in a utility application.

(i) Detailed Botanical Description of the Plant. This section should be a complete botanical description of the claimed plant. Specification of the genus, species and market class may begin this section, and the parents of the claimed plant may be specified in the initial part of this section. The growth habit of the plant should be described as to the shape of the plant at maturity, and branching habit. The characteristics of the plant in winter dormancy should be completely described, if appropriate. A complete botanical description of bark, buds, blossoms, leaves, and fruit should be a part of the disclosure. Plant characteristics which are not capable of definitive, written description or which cannot be clearly shown must be given substantive attention in this portion of the application. These would include, but not are not be limited to, fragrance, taste, disease resistances, productivity, precocity, and vigor. Even if the characteristics are well depicted, the botanical characteristics must be substantively described. The descriptions in this section should be botanical in nature and should be in terms of the art of the plant. The detail of this section should be sufficient to prevent others from attempting to patent the same plant at a later date by simply describing the plant in more detail and with the allegation that the original patent did not state the characteristics being further described.

(j) Claim. A plant patent is limited to one claim. The claim shall be in formal terms to the plant as shown and described, as the claim is statutorily drawn to the plant as a whole. The claim may also make reference to one or more of the unusual characteristics of the plant, but may not claim parts or products of the plant. The claim must be in single sentence form.

(k) Abstract of the Disclosure. The abstract is a brief description of the plant and of the most notable or novel and important characteristics of the claimed plant. Preferably, the description of the plant will be a condensed review or presentation of the most distinguishing characteristics of the plant.

While background information for specific classes of plants may be readily available, one seeking to file a plant patent application should be thoroughly familiar with the characteristics of the plant, and must assure that the plant is stable. Invention for purposes of a plant patent is a two step process:

• The first step is the discovery step which involves the identification of a novel plant. This step could be performed in any cultivated area. It could involve the identification or recognition of an off­type plant in a monoculture of a known variety or the identification of a desirable mutant which was either spontaneous or induced. Or, it could result from the identification or recognition of an outstanding individual within the progeny of a cross made in a planned breeding program.
• The second step, which consists of asexual reproduction, tests the stability of the claimed plant to assure that the plant's unique characteristics are not due to disease, infection, or exposure to agents which cause a change in the plant's appearance which is transitory and not due to a change in the genotype of the plant.

It is important that each of the above steps is satisfied before an application is filed. The inventor of a plant must have discovered or identified the novel plant, and must have asexually reproduced the plant and observed the clones so produced for a sufficient amount of time to have concluded that the clones are identical to the parent plant in all characteristics. It would be inappropriate to file an application before the second step of invention had been completed. Filing of an application before the second step of invention has been completed will result in rejection of the claim as being premature and non­statutory.

The applicant (or applicants) for a plant patent must be the person (or persons) who has (or have) invented or discovered and asexually reproduced the new and distinct variety of plant for which the patent is sought. In addition to the averments required for a utility application's oath or declaration, those applying for a plant patent must also state that applicant(s) has or have asexually reproduced the plant. If the plant is a newly found plant, the oath or declaration must also state that the plant was found in a cultivated area.

Plant drawings are normally photographic, but may be presented in other mediums, such as in permanent water color renderings, which faithfully present the appearance of the plant. Such drawings are not mechanical drawings and should be artistic and competent in their execution. Figure numbers and reference characters need not be used unless specifically required by the examiner. The drawing must disclose all of the distinctive characteristics of the plant which are capable of visual representation.

Drawings may be in color. Where color is a distinguishing characteristic of the new plant, the drawing must be in color. The colors depicted must correspond with their respective color designations set forth in the specifications defined in a recognized color dictionary which is specifically identified in the specification. Two copies of color drawings must be submitted. Color drawings may be made either in permanent water color or oil. Photographs or permanently mounted color photographs are acceptable. The paper used in mounting plant drawings, in any case, must correspond in sizes, weight and quality to the paper required for other drawings, i.e., in a utility application. The margin requirements of drawings are also the same as with other patent drawings.

Before an application is filed, the (clones of the) plant must have been carefully observed during the testing process. Because the botanical description of the plant must be reasonably complete, it would not suffice to describe just the fruit, or flower, or bark, or leaves of any specific plant, even if these plant parts were the valuable substance of the plant in commerce or the only parts seem to be distinctive or different. It would be inappropriate to describe just the bark, roots and juvenile growth of a rootstock, even if only these parts would normally would be seen by or important to the consumer who was to purchase the plant.

In preparation of a plant patent disclosure, all parts of the plant should be carefully observed through at least one growth cycle and such observations should be recorded in detail. Because many plants (like pine trees of the same species, asparagus plants, bluegrass plants, etc.) may look very similar, it may take the collective differences in a number of traits to distinguish a new cultivar. Failure to record characteristics and differences at their time of availability in the growing season could result in applicant not being able to adequately botanically describe the claimed plant when the specification is drafted. Incomplete records of a claimed plant may render it impossible to overcome defects identified in an examiner's rejection or at the very least prolong prosecution of the application.

Among the factors which must be ascertained for a reasonably complete botanical description for the claimed plant are:

• Genus and species
• Habit of growth
• Cultivar name
• Vigor
• Productivity
• Precocity (if applicable)
• Botanical characteristics of plant structures (i.e. buds, bark, foliage, flowers, fruit, etc.)
• Fertility (Fecundity)
• Other characteristics which distinguish the plant such as resistance(s) to disease, drought, cold, dampness, etc., fragrance, coloration, regularity and time of bearing, quantity or quality of extracts, rooting ability, timing or duration of flowering season, etc.

The amount of detail required in a plant patent application is determined on a case­by­case basis, and is determined by the similarity of the prior art plants to the plant being claimed. The examiner will evaluate the completeness of the application. The examiner's judgment may be tempered by the level of activity in a specific market class. The botanical description of a plant in a market class with a high level of commercial activity may require greater detail, substance and specificity than that for a plant in a market class of little activity.

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.

• 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.

• Make every attempt not to present a name for the plant which has already been used or is confusingly similar to a plant of the same market or botanical class. Search old catalogs and available international register listings before assigning a name to a plant.
• File all drawings in duplicate. Be sure that two formally mounted sets of drawings accompany the application when filed, and that these are of reasonable fidelity to the specified colors of the plant. Be sure that the scale and clarity of the drawings are appropriate to allow for adequate reproduction even if reduced in scale upon publishing. Include a transmittal sheet which itemizes the contents of the application as filed.
• File each individual application in a separate envelope, and be sure to include all of the parts of each application in the same envelope. Include a self-addressed postcard itemizing all of the components of the application (see MPEP § 503) for return to applicant with a preliminary indication of the serial number of the application.
• Model the application after a patent of acceptable format and content which describes a plant which is related to or in the same market class as the claimed plant, if one is available.
• Check that the oath or declaration is that required for a plant patent application. Ensure that the oath or declaration has been signed and permanent ink or its equivalent, and is signed no earlier than three months prior to the filing of the application. Check that the mailing address of the inventor(s) is/are correct and complete.
• Where color is a distinguishing characteristic of the plant, specify the color of the plant as defined by reference to an established color dictionary which is recognized in this country.
• Be sure that drawings filed are complete, correctly mounted, and reasonably correspond with the colors of the plant which are specified and to the true and characteristic plant coloration.
• Include the appropriate filing fee, search fee, and examination fee with the application to avoid processing delays.
• Direct pre­examination questions concerning the application to the Examiner, by telephone,to expedite prosecution. Include a current telephone number with all correspondence with the USPTO.

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