Plant Patent Application: The Patent Application Series

In this ‘Patent Application Series,’ I’ll be discussing the plant patent application.  I’ll explain what it is, what to know before filing, and why it is an important tool for the protection of a new plant.

What a Plant Patent Application is:

A plant patent application is a means for applying for the protection of a newly invented or discovered asexually reproduced plant and its unique characteristics.  Asexual reproduction, through a variety of means, including grafting and bulbs, allows for each new plant to be genetically identical to its parent. Infringement of a plant patent is determined by  proving that a plant is genetically identical, rather than visually similar.

Once a plant is patented, asexual reproduction of that plant  is crucial to an inventor’s ability to reproduce a plant that is a duplicate of, and genetically identical to the patent protected plant.  It is because of this necessity for genetic consistency that tuber propagated plants, i.e. potatoes, are not eligible for protection as a plant patent.  Any plant that is discovered in the wild or “in an uncultivated state” is also not eligible for protection as a plant patent.

Plants which are reproduced either sexually or asexually are eligible for protection through filing a Utility Patent application. A utility patent application could be filed to protect a plant’s utilitarian (useful) characteristics, as in the case of Genetically Modified Organisms (GMOs). In this example, a utility patent could protect the method of genetically modifying a plant to create novel characteristics, or new elements of the plant’s proteins, DNA, etc.

The type of patent you apply for determines what is required for filing the patent application.  There are specific requirements that must be met for a plant patent application filing to be accepted and for the plant itself to qualify for protection.  The most basic of these requirements is the need for the plant in question to be both new and non-obvious. The detailed filing requirements are defined by the United States Patent and Trademark Office (USPTO) here.

Alternatives to federal protection through the USPTO patent system, are the Trade Secret or international Plant Breeders Rights (PBR) or Plant Variety Protection (PVP) Certificates.   Trade Secrets are federally protected in the U.S. and are capable of protecting a plant species, as long as a reasonable and provable effort has been made to keep the secret aspect of the plant, i.e. genetic lines, out of the public domain. International protection through Plant Breeders Rights (PBR) or Plant Variety Protection (PVP) Certificates allow a breeder some exclusive rights to a plant they invented or discovered.  The process to achieve these Certificates is less stringent compared to the regulations governing U.S. patents, therefore the protection is less. In the positive, this type of protection is generally cheaper and allows a broader variety of plants to be protected, including tuber propagated plants. The term for this type of protection is 18 years from filing.

What to Know Before Filing:

Filing a plant patent application, as with all patent filings, does not guarantee a patent will be issued.  To become a patent worthy of issuance, a plant application must undergo patent prosecution. During this process, a patent examiner compares the as-filed plant to the available prior art, i.e. the plant patents previously published and issued by the USPTO.

To prepare for this step, the best approach is to request a patent attorney to conduct a preliminary patentability search and opinion before the patent application is filed. If the search has positive results, the application can be pursued with more confidence, but it does not guarantee that a patent will be issued.

After a thorough search, the next step in the process is filing the patent application with the USPTO.  It is important to understand that the U.S. is currently under the “first-to-file” rule. This rule proclaims that the first inventor to file for an invention with the USPTO has claim to the patent rights. With the assistance of an experienced legal team, you can secure “patent pending status”  by filing the required documentation in line with the rules set out by the USPTO. Claiming this status before a patent is properly filed is against the law.

Once filed, the “pre-examination phase” begins, in which the application is reviewed by the USPTO for its adherence to the filing-formalities.  After an application passes this phase, it is placed in a que with other patent applications to await formal examination by a USPTO patent examiner.  It can take 32 months for a plant application to begin the examination phase. This may seem like a long time, but bear in mind that plant patent applications are a very complicated matter .

Similar to utility patent applications, plant applications are published and made available to the public 18-months after the application is filed.  If the application is approved by the patent examiner, examination will be closed, and the patent will be allowed. With allowance, an issue fee is due before the application can be officially issued as a patent.  Unlike utility patents, an issued plant patent does not need to be maintained with the payment of a maintenance fee to the USPTO. Judged from the date it is filed, the term of a plant patent is currently 20 years.

It should be understood that an issued patent does not grant the patent owner the right to make, use, or sell the patented plant.  A patent attorney must conduct a freedom-to-operate search and analysis in order to determine this ability.  Patent protection alone only grants the patent owner the exclusive right to prevent others from asexually reproducing, marketing, or importing the patented plant into the U.S.

Why a plant Patent Application is an Important Tool:

A plant patent application is an important tool, because the resulting certified plant patents allow the patent owner exclusive rights to protect the patented plant.  The owner of a plant patent, who is the inventor unless the patent is assigned to another, receives a royalty each time the patented plant is sold. Possession of an illegally propagated plant is infringement, even if the act is inadvertent. With a plant patent, an inventor has legal recourse in this event, or if the patented plant is reproduced or marketed without permission. This creates an incentive for design and innovation by plant breeders and scientists alike.

Plant patents specifically are great for helping to secure a market. Market trials can be conducted to establish if a plant will be well received by the market, and therefore profitable. With a plant patent, you can establish market credibility by thwarting copiers.  Without the security provided by an issued patent, inventors may not be willing to put forth the effort required to bring their new plant to market. In this way, plant patents are not only important to the inventors or companies that own them, but they are also invaluable to society, which prospers from them.

Don’t leave a matter as important as your intellectual property to chance.  Willing help in the form of an experienced legal team is here and is just a call away.  We have patent attorneys located in Charleston, SC; Greenville, SC; and Knoxville, TN. Please contact us if you are interested in a plant application or other patent applications.