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Eden Prairie, MN 55344
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Protecting Your Plant

(II) Patent Protection for Plants

 

Plant Patents

A plant patent covers a distinct and new variety of asexually reproductive plant other than a tuber propagated plant or a plant found in an uncultivated state.  Asexually propagated plants are plants that are “reproduced by means other than seeds, such as by the rooting of cuttings, by layering, budding, grafting, inarching, etc.”  The requirements for a plant patent application are a plant application transmittal form, a fee transmittal form, an application data sheet, a specification, drawings in duplicate and an executed oath or declaration.  The specification is required to include a title, a cross-reference to related applications, a statement regarding federally sponsored research or development, the Latin name of the genus and species of the plant claimed, the variety denomination, a background of the invention, a brief summary of the invention, a brief description of the drawing, a detailed botanical description, a single claim, and an abstract.  Currently, the fees for filing a plant patent are less than the fees for filing a utility patent. 

The United States Patent and Trademark Office has stated that the “specification must particularly point out where … and in what manner the variety of plant has been asexually reproduced.”  Under the International Convention for the Protection of New Varieties of Plants (UPOV), the variety denomination must “not be identical with or confusingly similar to other names utilized in the United States or other UPOV member countries for the same or a closely related species” and “must not mislead the average consumer as to the characteristics, value, or identity of the patented plant.” 

The plant patent has only one claim directed to the plant since “[a] plant patent is granted only on the entire plant.” 

Utility Patents

The availability of the utility patent statute for protecting  newly developed plants was determined by the Supreme Court of the United States in J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International Inc., 534 U.S. 124 (2001).  In that case, the Supreme Court addressed the question of whether plants were proper subject matter for utility patents under 35 U.S.C. ยง101 or whether the Plant Patent Act of 1930 (hereinafter, PPA) and the Plant Variety Protection Act (hereinafter, PVPA) were the only means to protect plants.  The Supreme Court determined that plants are proper subject matter for a utility patent and that the PPA and PVPA did not prevent coverage of plants by a utility patent.  Unlike a plant patent or a certificate of protection under PVPA, a utility patent is not limited to a particular type of plant, e.g. asexually reproductive plant or sexually reproductive plant.  A claim in an application for utility patent can be directed, for example, to the entire plant, or to various parts, for instance a cell, a flower, a fruit, or a tuber of the plant.

Comparing Plant and Utility Patents

Applications for a utility patent and a plant patent are subject to many of the same requirements.  For example, both types of applications may be rejected for not complying with the written description requirement, for anticipation, and/or for obviousness.  Utility patents however have the additional requirement of usefulness.  Plant patents can protect purely ornamental plants. 

Applications for both types of patents are made to the United States Patent and Trademark Office.  However, during examination of a plant application, the Examiner can request that the Agricultural Research Service provide an advisory report. 

Once a patent has issued, both utility patents and plant patents have a term of 20 years from the filing date of the application or from the date of any earlier US application whose benefit is claimed.  (This is different from the term of a certificate of plant variety protection which runs for 20 years from the issue date).  Additionally, patent term extensions for delays incurred during prosecution are applicable to both types of patents. 

For utility patents, the owner is required to pay periodic maintenance fees to keep the patent in force.  Plant patents do not require maintenance fees.

The owner of a plant patent has 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.”  Thus, in a suit for plant patent infringement, the patentee must show that the plant at issue is the asexual progeny of the patented plant.  One defense to a plant patent infringement claim is independent creation.   Note that this defense is not available in a suit for utility patent infringement.

The claims of a utility patent can be broader because it can be directed towards a part of a plant as well as to the entire plant.  In some cases unique characteristics may be claimed functionally or on the basis of specific characteristic genes or products produced by the plant, so protection does not extend merely to the progeny.  Additionally, there are defenses or exemptions to the infringement of a plant patent and a certificate of plant variety protection which limit the breadth of their protection relative to that of utility patents. 

Fees

Government fees for filing, examination and grant of a utility patent are a minimum of $2,600 ($1,217 for small entity), with an additional $7,570 ($3,785 for small entity) payable as maintenance fees after grant.  Government fees for filing, examination and grant of a plant patent are $1,910 ($955 for small entity).  These fees change over time and so are likely to be higher when actually incurred.  Professional service fees are not included and will vary depending on the complexity of the application and the circumstances of examination. 

           

This article was prepared by Jennifer Buss and Walter Steinkraus.  Jennifer is an intellectual property lawyer and associate at Vidas, Arrett & Steinkraus. Walter is an intellectual property lawyer and partner at Vidas, Arrett & Steinkraus. For help protecting your plant-related intellectual property, please contact Jennifer at 952-563-3018 or via email.

Disclaimer
This article should not be considered legal advice. Your receipt of this update does not establish an Attorney-Client Relationship. We do, however, invite you to contact us if you would like us to represent you.

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