What is a Plant Patent? A plant patent is the grant that includes the right to exclude others from asexually reproducing a plant (see below for certificates for other plant intellectual property), 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. A plant patent is available to anyone who invents or discovers and asexually reproduces any distinct and new variety of plant. The kinds of plants involved are cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state.

What is Excluded? If you discover a new plant found growing in the wild, it is not eligible for plant patent protection. The courts from as early as 1841 have found that a patent may not be granted for “mere naked discovery.” In re Kemper, 14 F. Cas. 286, 288 (D.C. Cir. 1841). Plants found growing that are not the result of the inventor’s efforts, e.g., found in an uncultivated state, whether on a cultivated plot or in the woods, are not patentable: This according to the U.S. Court of Appeals for the Federal Circuit (In re Beineke, Fed. Cir., No. 2011-1459, 06-AUG-2012). The court found that Congress intended “patent protection was available only for plants resulting from human creative efforts by the patent applicant, and not for found plants.

The exception to these non-patentabilty rules are newly found seedlings, which were found in a cultivated plot. Such seedlings do not need to have been created by a plant breeder so long as they were discovered by the applicant on cultivated land. The Federal Circuit in the Beineke decision explained: “The apparent assumption underlying this [found seedling law] was that an exception was warranted for newly found seedlings because, the plant having been a seedling at the time of its discovery, it could be assumed that it was cultivated in its inception and that the cultivation of the land by man contributed to its creation.”

Plants capable of natural reproduction are not necessarily excluded from consideration, but they must have also been asexually reproduced and not found growing wild in the natural environment. Essentially, this means that plants that can be patented are those that are reproduced by means other than from seeds, such as by the rooting of cuttings, by layering, budding, grafting, inarching, etc.

Tuber propagated plants, like the Irish potato and the Jerusalem artichoke, are not patentable essentially because this group alone, among asexually reproduced plants, is propagated by the same part of the plant that is sold as food.

A naturally occurring bacterium is not patentable as a plant.  However a genetically engineered microorganism, that is, an artificial bacterium, may be patentable as a utility patent.  This was decided by the Supreme Court in 1980 in Diamond v. Chakrabarty, 447 U.S. 303 (1980).

PLANT PATENT APPLICATION COSTS

Costs. Total small entity costs through issuance are expected to be at least $5,300 and for a large-entity are expected to be $6,500. This amount includes an attorney fee of $2,000 through preparation and filing, plus $528 in typical small entity filing fees of the United States Patent and Trademark Office (USPTO), plus estimated $2,000 in patent prosecution costs to a final examiner decision, plus small entity allowance costs of $546. The USPTO plant patent application filing fees for a large entity are $1320.  For a micro-entity, the fees are half that of a small entity.  No maintenance fees are required for plant patents.

Services After Filing. Attorney fees for most small entities after filing are charged at the rate of $250 per hour up to a maximum charge of $2,000 to a final examiner decision, excluding petitions and other unusual costs. Proceeding beyond a final examiner decision is possible at extra cost. Patent prosecution activities after filing are similar to a utility application.  If the Patent Office examination leads to a determination that an applicant is entitled to a plant patent under the law, a notice of allowance is sent to the applicant’s attorney, calling for the payment of the issuance fees.

PLANT PATENT LIFETIME

Patent Lifetime. New plant patents have a 20 year life from the filing or priority date of the application.

CERTIFICATES FOR UNPATENTABLE PLANTS

Other Plant Intellectual Property.  A breeder of a new variety of a plant, which is reproducible from seeds or which is asexually reproduced, and which possess distinctiveness, uniformity, and stability, can seek protection of that plant variety under the Plant Variety Protection Act.  You should expect this protection to cost a minimum of about $7,700 if you have all of the required information for the application.  Certain exceptions apply. Government fees are currently estimated at a minimum of $5,150, including $4,382 for the application and examination; and a certificate fee of $768 upon issuance of the certificate. Attorney fees add an additional $2,968.

The Department of Agriculture, and not the Patent Office, has authority to issue a certificate of plant variety protection (not a patent, but largely equivalent) on sexually reproducible plants.  The  certificates can provide their owner with 20 years (25 years for trees and vines) of the exclusive right to “exclude others from selling the variety, or offering it for sale, or reproducing it, importing, or exporting it, or using it in producing (as distinguished from developing) a hybrid or different variety therefrom.”  Fungi and bacteria are not eligible for a certificate.

As long as you have not sold seed of the variety, offered or advertised it for sale for more than 1 year in the United States, prior to the date your application is filed at the USDA, your variety is still eligible for protection. You have more than one year of eligibility if the variety has only been sold in a foreign country. That time would be 4 years for most crops, and 6 years for a tree or vine.

No written descriptions are necessary and obviousness is not considered in issuance of a certificate.  2,500 seeds must be deposited with the Department.  These deposited seeds are in a public depository, but are not statutorily required to be accessible to the general public during the term of the certificate. The Plant Variety Protection Act is codified at 7 U.S.C. §§ 2321-2583. Note that the Plant Variety Protection Act provides exemptions from infringement for farmers to save seed from their crops for replanting on their own farm, for research, and for transporters and advertisers (7 U.S.C. § 2545). There is also a compulsory licensing clause with a “just price” provision (7 U.S.C. § 2404) : Utility patents for plants do not contain such exemptions from infringement. This contrast in protection is probably most significant in two respects: a farmer may not replant seeds on plants that have been awarded a utility patent; and, a breeder can use a plant that is protected by a Plant Variety Protection certificate to ‘develop’ a new inbred line but may not use a plant patented by a utility patent for that purpose.

GET ALL 3: PLANT PATENT, CERTIFICATE AND UTILITY PATENT

Multiple Applications. The U.S. Supreme Court in J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred International, Inc., 122 S. Ct. 593 (2001) held that sexually reproducing plants may also be subject to utility patents.  In addition, the Patent Office will allow a utility patent application for asexually reproducing plants.  However, the period of protection may not be extended by multiple applications.

The choice of which protection to seek, or whether to seek concurrent protection under all three statutes, might be important.  For example, a breeder of a seed-bearing plant could claim that a plant was useful, novel and nonobvious, entitling the breeder to file a utility patent application.  The breeder  might also show that the plant was new, distinct, uniform and stable, and therefore claim entitlement to a plant variety protection certificate.  And thirdly, the breeder might produce a cutting or otherwise asexually reproduce the plant, and claim entitlement to plant patent protection.

Some Benefits to Multiple Applications. A utility patent could avoid the Plant Variety Protection Act’s authorization of otherwise infringing uses of the plants for breeding and research and for farmers to use seeds descending from originally protected seeds that were legitimately purchased.

MORE INFORMATION ON PATENT APPLICATIONS

More Answers on Patents. See the FAQ page for more questions answered on patents, the design patent page for information on design patents, and the Utility Patent Details page for general patenting details.

PROCEEDING TO A PLANT PATENT APPLICATION OR CERTIFICATE

How to Proceed. Telephone (703-242-1247) or email Louis Ventre, Jr. with a short description of the plant you want to protect. If the Law Firm has no conflicts and agrees to represent you, you will be sent a retainer agreement with additional instructions on what information is needed.  As with utility patents, a preliminary search of U.S. patents and U.S. applications will be performed to make a judgment on patentability.  After you receive the preliminary patentability determination, if you then decide not to submit an application, your retainer will be refunded, except for inventions in areas of high failure risk, typically defined as abstract inventions. For the high failure risk areas, all but $1,000 is refundable. These high risk areas will be identified in advance so that there should be no confusion on your part.