This article has been written by Nikita Desai. This article explains the legalities of Plant Patents in the United States with landmark judgments. This article further explains the history of Plant Patent, patentability of Plant Patents, duration of Plant Patent, inventorship in Plant Patents, rights conveyed by a Plant Patent, why an asexually reproduced plant receives more protection than a sexually reproduced plant, steps to acquire Plant Patent, arrangement of the specification, drawings, and examination of Plant Patent application. 

It has been published by Rachit Garg.

Introduction

What comes to your mind when you find yourself surrounded by nature with lush green and varied colors? Whether you are on a holiday in the jungles of the Amazon or hiking through the forests of Colorado parks and wildlife? Whether you are sitting under the trees of a public park or seated and surrounded by your home-grown variety of plants in your balcony, garden, or an open deck. Do you feel peace, content, and at ease? If the answer is yes, why let us not know more about the ‘Plants’ that protect us from the shade of the sun during the summer times and provide us with a unique flavor of foods from across the globe?

Did you know that even these very plants, naturally existing or grown from the efforts of humans, are protected under the law by the government through Intellectual Property Rights (IPR)? These plants are protected for the holders, owners, or inventors of the plants from their competitors in the marketplace through Plant Patents. It is done to protect the plants, parent plants, and varieties of plants reproduced through the parent plant by breeding methods.

To understand the Plant Patent of the United States and how and in what ways it works, let us dig deep into this article. 

What is a Plant Patent

A Plant Patent is called an ‘Intellectual Property Right.’ This right grants an inventor exclusive rights to commercially exploit and market a new, distinct, asexually reproduced variety of plants. Therefore, anyone who invents or introduces a new kind of plant without using seeds (asexual reproduction process) is protected under U.S. law. 

Here, the intent of discovery and asexual reproduction of the plant by owner are necessary elements for which the protection under the plant patent can be granted by the U.S. government.

Plant Patents provide the inventor, or the holder, with a monopoly over the new variety, giving the inventor the right to prevent others from selling the plant variety or reproducing it.

A Plant Patent is only available for the plants that are grown and cultivated without using the seeds of the parent plants and not otherwise. This has to be done through various means of asexual reproduction.

Examples of plants that are patented (grown without seeds) include grape plants, bamboo plants, tulip plants, algae, and mushrooms.

Role of Intellectual Property Rights in Agriculture

Intellectual Property Rights (IPR) are special or protective rights provided to the breeders or farmers of the plant who discovered or reproduced the plant through asexual reproduction. It’s a right over their creation and ideas. It prohibits others from enjoying the same rights about the plant that the inventor or holder has created. 

Agriculture is not only about growing crops or plants, but it is also used for industrial purposes and raising animals for food, among other useful criteria, by using various farming and breeding techniques. Most of the developing countries depend upon farming and agriculture as a source of their income. By engaging in Agricultural Research these farmers find new and creative ways to grow and produce a variety of crops or plants. The farmers,  breeders, or inventors need the protection of their plants or crops from other competitors in the marketplace. Therefore, IPR in agriculture forms the basis for protection. 

Overview of the Plant Patent

• A Plant Patent protects the right of the inventor to control the plant’s use and its reproduction for 20 years, excluding the fee of maintenance. 
• A Plant Patent provides the inventor or holder with the right to stop others from copying the plant reproduction process, its use, sale, and importation of the plants and their parts. 
• This right is only available to the owner for the ‘claimed plants’ that do not easily exist in nature or can be made. This kind of plant contains the following essential elements:

• These Plants contain unique genes that cannot be made or manufactured through any naturally occurring reproduction process.
• These Plants that result from cultivated change include sports, mutants, hybrids, or transformed plants. These changes either occur naturally or are made through breeding programs. Examples are a mixture of different kinds of plants, plants that have changed naturally, new baby plants found in the garden, etc 
• Bacteria are excluded from protection. (The reason is further explained in the Re Arzberger case under the heading “Legal meaning of the word plant”).
• Algae and macro-fungi are also considered plants. These are applicable for plant patents because when placed in a cultivated habitat, the changes to their genes occur naturally, thus forming an entirely new unique variety of microorganisms.
• The requirements of description for the Plant Patent are not strictly followed as compared to the other patent laws in the United States.
• Plants that are grown and cultivated from the seeds of the plants are covered for protection under the Plant Variety Protection Act of 1970 (PVPA) of the United States. The PV[A is governed by the United States Department of Agriculture (USDA).

Legal meaning of the word plant

Let us understand how the word ‘Plant’ derived its meaning in the legal system. This all started with the landmark case of Re Arzberger, decided by the Court of Customs and Patent Appeals in the year 1940.

Re Arzberger case (Plant in the legal world)

Significance of the case

• In Re Arzberger (1940), the Court of Customs and Patent Appeals was of the view that bacteria do not amount to be considered plants in the sense of agriculture and horticulture.
• To reach this amazing conclusion, the Court analyzed the purpose of the Plant Patent Act of 1930 (PPA) and thereby concluded that plant refers to ‘organisms like trees, shrubs, and herbs that could be reproduced by using non-traditional techniques, separate from its parent plant.’
• This meant that bacteria were excluded from the grant of plant patent.
• According to the verdict of this case, bacteria were considered plants but under only scientific terms and not under general terms. This is because bacteria possess ‘plant-like qualities’ as observed by the Court.
• In this case, the Court, because of this reason, stated that bacteria did not cut the parameters for it to be considered as a plant.
• The issue was whether the bacteria (micro-organisms) in question would amount to protection under the Plant Patent Act of the U.S. law or not.
• The Court rejected the appeal based on the ground of  ‘absence of invention’ on the part of the applicant (Plant holder).

History of the Plant Patent

Did you know that it takes almost 10-15 years for a plant breeder or inventor to create a new variety of plants? However, the shelf life of these varieties of plants in the marketplace is only shortlived for 2-5 years. Therefore, for the varieties of plants, protection in the form of a patent is provided by the U.S. government.

Documentary events

The Year 1890- Concerns among the source ‘fruits and tree breeders’ or inventors were on the rise because the competitors in the market were selling back the same varieties of plants these source inventors created or reproduced. The competitors were using the same asexually propagation method. These source inventors demanded the legal protection of their plant varieties from the U.S. government, which led to the enactment of the Plant Patent Act of 1930 (PPA).

For example, Stark Brother Nursery and Orchards IP their rights on the ‘Apple tree’ because competitors started exploiting the propagation method without their permission. 

Plants and the varieties reproduced only through asexual reproduction were applicable to be patented through the PPA law with only a single claim for their plant i.e. variety. This includes

• Trees (citrus and nut).
• Shrubs (viburnum).
• Fruits (blueberry, raspberry, etc.).

The Year 1961- Various attempts and efforts were made by the source plant owner to request for the plants reproduced through asexually propagated methods be included in the PPA law. However, to no avail, all such efforts were rebutted by the U.S. government.

The Year 1970- For the protection of the plants (reproduced through the seed method), numerous attempts were made by the breeders. They demanded this right be included under the PPA law which led to the creation of the Plant Variety Protection Act of 1970 (“PVPA”) by the U.S. government with similar rules for claims as that under PPA law.

The Years 1930-1970 – The majority of the Plant Patents in the U.S. states were acquired by the breeders in respect of roses, and that led to the creation of rose breeding industries.

The Year 1981- To protect the rights of the breeders or inventors concerning the plants reproduced by them, the U.S. government became a part of the International Convention (Treaties) called the International Union for the Protection of New Varieties of Plants (“UPOV”). This is further discussed under the heading “Other modes through which plants are protected.” 

The Year 1994- The U.S. government enabled the protection of all the species of the plant, by complying with the UPOV provisions of 1991, including protection for sexually and tuber propagated plants.

The Year 2002- The U.S. government granted 777 special Plant Patents and 222 utility patents to the holder of the plants.

Landmark case laws

Diamond v. Chakrabarty case (Man-made modified microorganisms)

Significance of the case

• In Diamond v. Chakrabarty (1980), the U.S. Supreme Court stated that even genetically engineered (human-made) living organisms fell under the ambit to be patented under U.S. law. This case created history for the breeders of the plants for them to receive legal protection.
• The U.S. Supreme Court settled the rule that “anything that is created with the efforts of humans using chemistry is applicable for protection under patent laws, whether it’s alive or dead.”
• The case gave a boost to the biotechnological inventions in the fields of ‘medicine, agriculture, and environmental science.’
• The case set a precedent for more cases, involving the question of law of life forms and patents.

Facts of the case

• In the year 1972, Chakrabarty, a microbiologist, through genetic engineering, created a bacteria. This bacteria was able to break down the crude oil and was found to be useful in the oil spills. 
• The scientist, based on the usefulness of the invention, applied for its patent with the United States Patent and Trademark Office (USPTO).
• The USPTO, however, rejected the patent application because the bacteria were found to be naturally occurring microorganisms and opinionated that Congress does not grant patents over natural living organisms in the Plant Patent Act of 1930 (PPA)

The Issue involved in the case

The issue was whether man-made modified microorganisms could be patented under the U.S. patent law (PPA) or not.

Judgment of the Court

The U.S. Supreme Court ruled in favor of Chakrabarty with a majority vote of five to four. The Court while referring to the definition incorporated in 35 USC 101 Inventions patentable (Invention of usefulness) and as contentions made by USPTO (confirmed by USPTO), the Court further stated that the living organisms that are created from human effort and those that are not naturally occurring in the environment are liable to be patented under the U.S. law.

The Court was of the view that Congress did not enact the U.S. Patent law to ‘limit the patentability on living organisms.’ Therefore, according to the Court, the genetically modified bacteria was applicable to be protected under the patent law and ordered the UPSTO to comply with the same.

Ex Parte Hibberd case (Protection under utility patent laws)

Significance of the case

• In Ex Parte Hibberd (1985) the U.S. Court of Appeals verdicted that mutant or hybrid plants (transgenic plants), became the subject matter for eligibility of patentability under 35 USC 101 of the PPA. This was a significant decision on the protection of the plants under the U.S. Patent laws.
• The case led the Plant for Protection to become a part of a utility patent law. This is because the individual components of the plants (Roots, stems, leaves, flowers, fruits, and seeds) are liable to be patented under this law.  
• The case set a precedent, following the guidance of the rule settled under the previous case.
• In the year 1988, the majority of the crop or plants received utility patents, including “11 for corn, 6 for sunflower, and 5 for soybeans.”
• The USPTO also “granted 1800” utility patents for germ plasm.

Facts of the case

There was a scientist named Kenneth Hibberd and in the year 1985, he wanted to patent a special kind of corn that was producing a helpful amino acid called tryptophan. The scientist wanted to patent this variety of corn plant under the utility patents laws for industrial applications. This kind of corn plant was grown from the seeds of the plants by an asexual reproduction method called the tissue culture process (genetically engineered).

During this period, the USPTO, however, rejected the application on the ground that such a variety of plants was only applicable for protection under the PVPA or PPA laws and not under the utility patent laws.

The Issue involved in the case

The issue was whether genetically engineered plants and their parts could be patented under utility patent laws or only under PVPA and PPA  laws.

Judgment of the Court

The U.S. Court of Appeals, while relying on the rule settled by the Court in the case of Diamond v. Chakrabarty, stated that the new variety of a plant, not naturally occurring and created through man-made efforts is liable for protection under the utility patent laws because of its usefulness.  According to the Court, genetically engineered plants, seeds, and plant tissue were applicable to be patented.

The Court, while denying the claims of the USPTO further stated that the plants that are grown using the tissue culture methods are considered to be a “unique category” of plants and not a regular category of plants. Therefore, such plants are applicable to be patented. 

Pioneer Hi-Bred case (Protection of invention for usefulness)

Significance of the case

• In JEM Ag Supply v. Pioneer Hi-Bred (2001), the U.S. Supreme Court of Appeals granted the right to protect a similar variety of plants under the utility patent laws. The plants that are “reproduced sexually” by the plant owner using technology (genetically engineered) were eligible for protection.
• The exclusive rights of the companies that patented their seeds are protected under the utility patent laws.
• The companies have to clarify their position (the company wishes) on what happens afterward when their seeds are sold.

Facts of the case

• The JEM Ag Supply is a company that sells seeds for agricultural purposes to a third party for growing plants.
• The Pioneer Hi-Bred is a company that develops and sells genetically modified seeds of corn to a third party for growing specific varieties of plants. The company patented its various corn seeds under utility patent laws.
• JEM Ag Supply purchased hybrid corn seeds from the Pioneer Hi-Bred company.
• Both companies were bound by a contractual licensing agreement that stated: “The seeds of the Pioneer company were eligible to be sold only for a specific period of the year.”
• The JEM Ag Supply violated the agreement by reproducing plants they bought from Pioneer Hi-Bred and even resold the same. 
• The Pioneer Hi-Bred sued JEM Ag Supply because they patented their corn seeds. According to the patent laws, the company had an exclusive right to sell, use, and import its products. This law also excludes others from doing the same on the patented seeds.

The Issue involved in the case

• The issue was whether the same variety of plants created by JEM company, using the seeds of the Pioneer Hi-Bred was legal or not. 
• The question of the law was whether JEM Ag Supply has a right to save, replant, and resell the plants in the next season.

Judgment of the Court

• The United States Court of Appeals for the Federal Circuit decided in favor of Pioneer Hi-Bred.
• The Court stated that the “exclusive right to use, sell, and reproduce the plants belongs to the Pioneer Hi-Bred because they have already patented their hybrid seeds.”
• The Court stated that JEM Ag Supply violated the agreement by “saving, stocking, replanting, and re-selling” the reproduced plants without the permission of the Pioneer Hi-Bred company. 

Plant Patent in American law

United States Patent and Trademark Office (USPTO)

According to Article 1, Section 8 of the U.S. Constitution, USPTO (a government agency) reserves the right to grant Patents and register trademarks. This right is provided to “authors and inventors for their writings and discoveries.”

The USPTO falls under the ambit of the U.S. Department of Commerce.

In terms of Plant Patents, the United States Patent and Trademark Office (USPTO), issues patents on new varieties of plants, and since then, the USPTO has issued more than 20,000 Plant Patents. The USPTO Patent Technology Monitoring Team (PTMT) showcases the data from the year 1963 to the year 2020 of various patents being granted by the U.S. Patent and Trademark Office. The highest Plant Patent granted by the USPTO in the year 2020 was with a total no. of 1398, while the lowest was recorded with a total no. of 52 plant patents granted in the year 1970.

Rights conveyed by a Plant Patent

The right conveyed by a Plant Patent is similar to utility patent laws. A Plant Patent grants the inventor exclusive rights to commercially exploit and market the new variety of plant. This means that the inventor has the right to prevent others from selling the plant variety or reproducing it.

In addition to the exclusive right to commercially exploit and market the new variety of plants, the inventor also has the right to grant licenses to others to exploit and market the plant variety. These licenses can be exclusive (meaning only one person has the right to exploit and market the plant variety) or non-exclusive (meaning multiple people have the right to exploit and market the plant variety).

Title 35 U.S.C. Patents

According to the 35 USC 161 – 164, Part II- Patentability of Inventions and Grant of Patents, the provisions for Plant Patents are codified under Chapter 15. 

The laws of Plant Patents are covered under the ambit of U.S. Trademark Law (Federal Statute) which is mainly governed by The Lanham Act of 1946. These provisions of law were established from the Patent Bills and Statutes that are now referred to as the Plant Patent Act of 1930 and are governed by the USPTO.

According to the Plant Patent Act of 1930 (as amended in 1954) whenever, there exists a new variety of plants that can be grown, without seeds in larger quantities and upon providing the proof of the same, the one holding such plant in possession can acquire the plant patent (right to control who can use and grow the plant). The plant grown without seeds makes the plant of a unique quality.

Now, let us understand the provisions of Plant Patents.

35 USC-161 Patent for Plants

According to 35 USC 161, anyone can legally acquire the exclusive right (patent ownership right) to use and control a variety of plants. These are based on the following conditions:

• If someone creates or discovers a new and unique type of plant by adopting alternative methods to grow, or reproduce, instead of the traditional methods by using seeds, then the right to the plant is granted by the USPTO.
• These alternative methods (asexual reproduction) include cultivated sports, mutants, and hybrids, apart from traditional methods of tuber propagated plant or uncultivated plant state.

Asexual propagated plants or asexual reproduction

To be eligible for a Plant Patent, the invention must be able to be reproduced asexually. This is a very important part of the Plant Patent process as it ensures that the new variety of plants is reproducible and that the inventor has created the new variety of plants.

Asexual reproduction is the process of reproducing a new variety of plants from cuttings, grafting, or other asexual means.

According to 7 USC 2401, the asexual reproduction of plants refers to the method whereby the reproduction of a new variety of plants is based on the means of non-seed methods. We can say that it is a type of cloning process. This includes:

• When there is no use of fertilized plant seeds for creating an exact genetic copy of the parent plant.
• The horticulture technique of root division, layering, budding, tissue culture, uniting, tissue culture, etc.
• Sexually reproduced plants that are grown using asexual reproduction techniques. For example, plants such as ginger, onions, and potatoes can be grown from the buds present on the surfaces of the stem.

Tuber propagated plants 

This is a type of method, whereby the plants are grown from a ‘specific part of an underground branch (roots).’ This is also a form of vegetative asexual reproduction. These parts grow from the bulbs or tubers of the plant. For example, sweet potato, caladium, or Jerusalem artichoke.

The patent for such kinds of plants is not available because of the reason that when these plants grow, they are directly consumed and sold as foods, and also, new plants are produced from their parts.

How to acquire a plant patent

To acquire the ownership right for a plant the rules, laws, and regulations of the regular patent-acquiring process are applicable with little modifications. This requirement of patentability is further discussed under the heading “Patentability of plant patents.”

35 USC-162 Description, claim

According to 35 USC 162, certain specifications need to be met to acquire a plant patent. These requirements include:

• The Plant Patent application reasonably needs to comply with the specifications of description as provided in 35 USC 112, otherwise, such applications for plant patents will be considered illegal or invalid.
• Compliance with these requirements need not be absolute or followed in a strict sense.
• In respect of the ‘claim’ for a plant patent, the law states that the claim should be written in the official and proper language, and it should exactly match the plant specifications in the way it is shown and described in the form (application) for the claim. 
• There is only ‘one claim and one description’ (single claim) made available for the whole plant by the USPTO. These provisions were added to the PPA through Amendment of 2011 and are effective till date.

35 USC 112- Specifications

This Section outlines how the specifications for plant patent applications are to be written, including the descriptions, claims, types, and references to each other. The application for a plant patent must provide the following information for it to be considered for plant protection.

• The document must explain the claimed plant. This includes:

• Explain the use, if any, and how the new variety of plants was reproduced.
• The specifications in the application should be clear for skilled and unskilled individuals in the specific field to understand and also be able to replicate the same by studying the information.
• The claim must include:

• The importance of the new variety of plants discovered or reproduced through asexual reproduction. There should be absolute clarity on this subject matter.
• There should be one or more claims, that precisely state the importance (unique quality) of the claimed plant.
• These claims can be written in the form of statements either as, independent, dependent, or multiple-dependent statements and with or without the references.
• It should also explain the main aspects of the claimed plant for plant patent.

Example of rose patent 

• Consider a scenario where you developed a unique kind of plant, say a rose, a sunflower, or a marigold, etc., and now to protect it from other competitors, you want to apply for a plant patent of the same.
• In order for the application to be successful, you will have to provide the following information in a manner that:

• The characteristics of the rose or the flower that you invented, even though it is not 100% accurate, match the descriptions, and the criteria of 35 USC 162 and 112  for the claimed plant to be considered for a plant patent.
• For the claim process, you will have to describe those unique characteristics of the rose, or flower as shown and presented in the document (plant patent application) before the USPTO for protection. It should be in a formal language.

35 USC 163 Grant

According to 35 USC 163, an inventor of a new variety of plant or the applicant for the plant patent of the unique variety of the plant reserves the exclusive right to stop others, without the inventor’s permission from the following:

• To stop others from using the same method of asexual reproduction of the said claimed plant.
• To stop others from the use, offer for sale, or sale of the claimed plant so reproduced.
• To stop others even from the use, offer for sale, or sale of any parts of the claimed plant.
• To stop others from the import, or any parts for the import of the claimed plant.
• This is applicable throughout the United States of America.

Examples of plants include plants grown from cloning, grafting, or cutting. In simpler terms, we can say that the inventor has a right to stop others from copying the plant and its parts in the same manner and the same way.

Purpose of 35 USC 163

• The purpose is to ensure that the holders of the plant patent stay protected from illegal reproduction of their claimed plants by the competitors in the market, whether it is of the plant parts or the sale of the plant’s parts.
• Additionally, there is a secure space, whereby the rules are more consistent and proper for the breeders, who reproduce the new varieties of plants using the sexually propagated method of reproduction. This is included under the U.S. Plant Variety Protection Act of 1970 (PVPA). More about this is discussed in detail further under the heading “Plant Variety Protection Act of 1970.”
• To strengthen the ability of the inventors through plant patent laws. 

Impact of 35 USC 163

According to the findings by the USPTO, 35 USC 163 has the following impact in the United States.

• Since the 1930s because of the Plant Patents in the U.S., the sectors of agriculture and horticulture saw a tremendous amount of success in the respective fields for the development of new varieties of plants by the breeders.
• Due to the growing demand for innovations in the field of agriculture, whether it is domestic or international USC 35 161-164 has created hardships in collecting royalties for the breeders of patented plants from their competitors.

• The claimed plants that are produced from the parts of the parent plants are exploited by traders and non-traders. They illegally acquire the plant’s parts and then sell the same for profit. This is considered an unfair trade practice. Such activity has diluted the credibility of the source innovator.  
• These provisions have made it difficult for investors to invest in the research sector and breeding sectors for various crops and plants.

35 USC-164 Assistance of the Department of Agriculture

According to 35 USC 164, the President of the United States possesses the capacity to use an executive order by ordering it to the director of the United States Department of Agriculture (USDA). The head of the USDA carries out most of the functions of the department. 

This order is carried out for the purpose that the rules regarding plant protection are followed effectively. 

The USDA can carry out the following activities:

• To share the information about the plants that the USDA already has with them.
• To research problems related to the plants, the USDA has in possession.
• The head of the USDA can also send a team of expert officers and employees in the field of agriculture to help the President of the U.S. in the form of guidance. 

Why do asexual reproduction plants receive more protection than sexually reproduced plants

The United States Farm Bill 2018, enacted into the law Agriculture Improvement Act, 2018 by President Trump’s administration changed the game of protection for asexually reproduced plants. The asexually reproduced plants started to receive more protection under U.S. Patent laws than the sexually reproduced plants because of this farm bill. This bill enabled various changes to be made under the PVPA for the plants that are grown without seeds. Earlier protection for such plants was only granted by the PPA of 1930.

Plant Variety Protection Act of 1970 (PVPA)

While the PPA enables the protection of a unique variety of plants reproduced only through non-seed methods (asexual reproduction) to the plant owners, the Plant Variety Protection Act of 1970 (PVPA) on the other hand, safeguards the rights of a plant owner of a unique category of plants that are reproduced using seeds. These varieties are reproduced using tuber-propagated methods (sexual reproduction). 

Asexually reproduced plants, however, have numerous provisions of protection under the PVPA as compared to sexually reproduced plants. These two laws (PPA and PVPA) for safeguarding the plants are entirely different in their ambit and applicability. PVPA provisions are similar to utility patents and are way more strict in their applicability than the PPA. Let us understand the provisions of PVPA through its overview.

Plant Variety Protection Act of 1970 (PVPA)

• The PVPA was established to inspire and uplift plant owners into creating more plants of varied natures.
• The PVPA involves the ‘collection of monies, or collection of royalties’ so that from such the administrator of the PVPA can fund current and future developments. 
• The protection is provided in the form of certificates and is issued by the Plant Variety Protection Office (PVPO). 
• The PVPA provisions are covered under 7 USC  2321- 2583, Chapter 57 Plant Variety Protection.
• The PVPA application fee is regulated by the secretary of PVPA including penalties, funds disposition, and legal suits when there is nonpayment of the prescribed fees.

Plant Variety Protection Office (PVPO)

The PVPO regulates and oversees the efficiency of the PVPA by enabling legal defense to the plant owner through certificates. The PVPO falls under the ambit of The Agricultural Marketing Service of the U.S. Department of Agriculture (USDA).

The PVPA applications for certificates are skimmed and examined thoroughly before granting them to the plant inventor or holder. The lawful protection is provided for 20 years. However, an exception to this rule is that the ‘trees and vine trees’ are eligible for protection for a term of  25 years.

What is the significance of the Plant Variety Protection Act and how it is applied

• Before the enactment of the PVPA, public institutions were responsible for growing various types of crops and plants. However, this led to very less developments in the field of agriculture. To tackle the issue of fewer developments and less funding along with the issue of the damage that occurred because of the use of pesticides for growing crops and plants, Congress decided to enact the PVPA.
• PVPA laws appeared as a beacon of light for the holders because it allowed them to collect monies to fund their development for creating different kinds of crops and plants.
• The advantage of this law is now taken,  both by the public and the private sectors involved in plant breedings. However, these criteria were far from being not problematic because they led to unauthorized production and collection of monies, due to which the field of agriculture remained underdeveloped. To tackle this specific issue of illegality that arose because of the PVPA,  Amendments to the PVPA were made in the years 1994 and 1955 to apply the provisions of the law with efficacy.

Now let us understand how PVPA is applied, contributing to effective solutions for developments in the field of agriculture.

• Whenever anyone, without the permission of the holder of the new variety of plants sells or offers for sale,  then such person or company amounts to have infringed upon the rights of the holder guaranteed by the PVPA.
• The inventor of a patented plant in such a situation can take legal action by initiating a suit in the appropriate court (District Court, High Court, or Supreme Court of the United States) against the infringer by asking for damages in return along with legal costs.
• The damages as remedy awarded by the U.S. Courts can be 3 times higher in money than what is lost by the patented plant owner.
• These rules are even applicable to the individual who helps the inventors in farming and sells the new variety of crops without the permission of the inventor.
• To protect the ownership and the rights of the holders under the PVPA, the inventor is provided with two options:

• The inventor has the option of creating an agreement of sale for different varieties of seeds.
• The second option is to take the route of the Federal Seed Act, which enables the inventor to sell certified seeds under a specific name.

The regulations related to PVPA are covered under Title 7- Agriculture in the Code of Federal Regulations. 

The Amendments to the Plant Variety Protection Act through Farm Bill, 2018

Definitions and rules of construction

According to 7 USC 2401 (a) (1), an ‘asexually reproduced’ refers to a method of plant propagation using vegetative material from a single parent, including, cuttings, graftings, tissue culture, and root division.

Rights to plant varieties protection

According to 7 USC 2402 (a), the plant owner of a new variety of plants or his/her successor will be entitled to the protection of the ‘variety’ of the claimed plant. The variety of the plant needs to be new, distinct, uniform, and stable. 

The variety of a plant is what makes a plant unique and helps distinguish it from other plants in the marketplace. The new variety of plants should be created through sexual and asexual reproduction or tuber propagated methods. 

Infringement of plant variety protection

According to 7 USC 2541(a), following acts by a plant breeder amounts to infringement of the patented variety of plants if, done in the U.S. or businesses that are controlled by Congress. This includes:

• To sell or market the patented variety of plants.
• To import or export the patented variety of plants from the U.S.
• To multiply the patented variety of plants by using any reproduction process.
• To develop hybrid plants from the patented variety of plants.
• To use the prohibited seeds to multiply the patented variety of plants.

These mentioned rights are only allowed:

• After the expiration of the plant patent certificate is enabled to the plant owner.
• After the plant patent term (20 -25 years) is exhausted by the plant owner.
• After the plant owner of the patented plant has been shared with a notice under 7 USC 2567 (Limitation of damages; marking and notice).

False marking, cease and desist order

According to 7 USC 2568(a), certain acts by the plant owner are prohibited by the U.S. government in connection to the sale, the offer of sale, or advertising of the sexually, asexually, or tuber propagated plants. These acts are barred by the secretary of USPTO following a cease and desist order. However, such acts can still be carried out if, an appeal is filed by the claimed plant owner under 7 USC 2461. 

The plant owner who violates these laws or deceives the public, “shall be fine not more than $10,000 and not less than $500.” The plant owner who is aggrieved by the provisions of this law can seek the remedy by initiating a civil lawsuit in the competent Court of the United States of America. 

Protection is more favorable to asexually reproduced plants than to sexually reproduced plants

The situation before the Farm Bill, 2018

• An asexual plant, reproduced by the plant owner was only applicable for protection under the PPA. The provisions allowed the exclusion of others from creating exact copies of the patented plants and their parts.
• According to the PPA, other competitors (plant breeders) were free to use, reproduce, sell, and import the patented variety of plants by making little modifications.
• A sexually reproduced variety of plants by the plant owner 

The situation after the Farm Bill, 2018

After the Farm Bill, 2018 was enacted as a law, notable changes were made to the PVPA for the protection of asexually reproduced plant varieties. This includes:

• The changes in the PVPA allowed other competitors to create a new variety of plants from the patented plant if, there are notable and unique differences. Thus, both the breeders stay protected under the patent laws of the U.S.
• The plant owner has to satisfy the USPTO that the claimed plant has unique characteristics as compared to the patented plants and include:

1. The new variety of claimed plants has not been sold and used before.
2. The flowers or seeds from such a claimed plant are not yet sold by the plant owner.

• The plant owner is provided with one year to experiment with the new variety of plants and even sell the same for their growth. If the claimed plant is sold outside the USA, the duration of time is extended to 4-6 years for protection.

Why choose the Plant Variety Protection Act over the Plant Patent Act for asexual plant protection

• The PVPA protects the asexually reproduced varieties of plants if sold over a year ago outside the USA. This is not enabled under the PPA.
• The duration of protection in PVPA lasts for 20 to 25 years for trees, from the date of patent issue as compared to the PPA.
• The PVPA serves as an alternative form of protection as compared to the PPA in terms of patent extension.
• The PVPA offers exceptions to the plant owners that are not enabled under the PPA.

Patentability of Plant Patents

In the United States, before applying for plant patents, certain legal essentials or legal necessities, need to be followed by the inventor or holder of the new variety of plants. These conditions are called ‘patentability of plant patents.’

The conditions for patentability provisions are covered by 35 USC 100-105 that fall under Chapter 10 Patentability of Inventions, Part II- Patentability of Inventions and Grant of Patents. 

Plant Patents are subject to the same legal requirements as any other type of patent under the Patent laws of the United States with little modifications. In terms of plants,  let us understand the provisions of patentability.

General key points of legal requisite

• The claimed plant should be invented or discovered through a cultivated state and reproduced without seeds.
• The claimed plant or the methods used for the reproduction process of the claimed plant should not be barred by patent laws of the United States.
• The name of the inventor of the claimed plant should be mentioned in the application for plant patent.
• The claimed plant should not have been available for use by the public in the past.
• The claimed plant should not have been discussed or described anywhere in the past.
• The claimed plant should contain one unique characteristic of its own, making it different from other plants that exist in the market.
• The claimed plant characteristics should be easily recognizable by the field expert or any ordinary individual in that field.

Legal requisite for patentability

These lawful requirements for patentability are broken down into four major provisions such as: 

• Statutory or, subject-matter eligibility.
• Novelty.
• Non-obviousness.  
• Usefulness.

Statutory

According to the statutory requirements of patentability under 35 USC 101 (Inventions patentable), the foremost important thing in a plant patent application is the ‘subject matter.’ The subject matter here is a ‘new variety of plant’ that is ‘discovered or developed through asexual reproduction.’

The requirements of statutory provision simply refer to the question of whether the plant in a plant patent application can be patented or not. This provision is necessary to be fulfilled by the plant owner for the patentability of plant patents. 

One interesting thing to note is that patent protection for the claimed plant is not made available because they are new or useful inventions. It is only provided when the USPTO is satisfied that the claimed plant adds value for the betterment of  society in terms that such a plant patent has a meaningful implementation of ‘process, machine, manufacture, improvement, or composition of matter.’ Anything beyond that is not able to receive protection under the U.S. patent law.

For example, data structures, books, electromagnetic signals, laws of nature, and abstract ideas are far-fetched from getting patented.

The case of Diamond v. Chakrabarty (Supra), discussed earlier under the heading “History of plant patents”, forms the prima facie evidence of the statutory rule in answering the question of what is patentable and what is not patentable. Under this case as well, the subject matter, a bacteria (micro-organism) created by the microbiologist Chakrabarty was in question of whether such bacteria created by human efforts can be eligible to receive protection under the U.S. Patents laws or not. 

The U.S. Supreme Court verdicts in favor of the microbiologist and states that ‘genetically engineered living organisms’ (subject matter) are eligible to receive protection in the form of a patent.

Armstrong Nurseries case (Asexual reproduction proof for plant patent)

Significance of the case

• In Armstrong Nurseries Inc. v. Smith (1958), the U.S. District Court of Texas established the requirements of need for evidence to prove the fact that asexual reproduction (without seeds) has taken place for the creation of a new variety of plants by the plant owner from the patented plant.
• According to the Court, this evidence can help prove the infringement of the party in dispute.
• In this case, the infringement did take place as the Court was satisfied with the fact that the patented roses were infringed by such a reproduction process and even sold by the infringer. 

Novelty

To be eligible for a Plant Patent, the variety must be a new, distinct, and asexually reproduced variety of plants. 35 USC 102– covers the provisions of conditions required for patentability. 

The novelty requirement refers that the variety must be novel (unique), meaning such a variety of plants must not have been sold or made available to the public before the filing date of the plant patent application. The variety of plants must also be distinct, meaning it must be different from any other known variety of plant in at least one characteristic. Lastly, the variety must be reproduced asexually, meaning it must be able to be reproduced from cuttings, grafting, or other asexual means or methods.

For example, an inventor developed an orchid flower with blue color petals along with a distinct aroma from the traditional white color orchid flower and its fragrance. If such a variety is not described, publicly seen, sold, or published in the world before the filing date of the plant patent application, then such a claimed plant is considered novel and distinct.

Let us understand the provision of 35 USC 102 (novelty) in terms of Plant Patents. 

Prior Art or prior public knowledge

• The inventor or holder of a new variety of plants qualifies to receive the patent if:

• The plant discovered or reproduced through asexual reproduction is not known, used, patented, offered for sale, or described in a printed publication by others in the United States or a foreign country before the date of the invention. 
• There exists no evidence of previous public knowledge of the claimed plant that is filed for an application for a plant patent. 
• The claimed plant has not been ‘claimed priorly,’ or reproduced priorly. This rule, therefore speaks about ‘one patent, one inventor’ criteria. It means that for a single innovation, a single patent is provided by the U.S. government to a single inventor.
• The claimed plant discovered or reproduced through asexual reproduction is not a subject matter of 35 USC 151- Issue of patents. It means that no prior or previous written notice of allowance should have been issued by the USPTO to another inventor in respect of that claimed plant in question.
• The claimed plant is not a subject matter of 35 USC 112- specifications. It means that such a plant or application of the same should not contain specifications or descriptions regarding how the plant was bred in a prior date and the same should not have been published in the past.

Joint ownership

• According to this clause, if:

• There is more than one party (group of individuals or organizations) formed for the common purpose of ‘research’ (development of the new variety of plants) and;
• These parties have entered into an agricultural research agreement on a specific date, before the filing date of the claimed invention they created during the research.
• Then, under such circumstances, the claimed plant or reproduced plant through asexual reproduction is jointly owned and enjoyed by such groups as a single inventor.
• This law prohibits each group from filing for a separate or different plant patent application on a similar plant discovered or reproduced through asexual reproduction by joint ownership.

Prior knowledge of plant patents as evidence

• This clause discloses how prior plant patents or applications of such can be used as evidence for the fact that whether the claimed plant is truly new and unique or not.
• The USPTO makes sure that the plant applied for consideration of the patent protection is not a variation of the plant that is already known to the public (prior art) and is patented.
• The USPTO will reject the application if the claimed plant lacks novelty.
• According to this clause, the USPTO will look for the following to determine whether the claimed plant discovered or reproduced asexually is new or not. This includes:

• The date on which the previous plant patent or application of the previous plant patent was filed or published before the USPTO. This date becomes a priority.
• The ‘similarity’ between the prior-filed or published plant patent and the current plant patent application (claimed plant).
• Even the minute difference between the plants in dispute is rejected by the USPTO because the plant information contained in the application becomes obvious to an expert or an ordinary individual in the field of agriculture.

Exceptions as to what is acceptable as prior art 

• According to this clause, USPTO will consider the following criteria for accepting what should be considered as prior art:

• There should be no previous disclosure of information about the claimed plant or an offer for sale of the reproduction techniques of the claimed plant to anyone, anywhere.
• The disclosure of information about the claimed plant should not be made or sold within 1 year or 1 year before the patent application filing date. This means that an inventor only has a year to file for the patent application in case the inventor discloses secret information about the plants or their ideas.
• If the information about the claimed plant is disclosed or leaked by the source inventor or the source joint owners, to their friends or some other inventor or joint owners and such a party or individual files for the plant patent application before the source inventor or source joint owners, then they lose the right of what is known as prior art.

For example, an inventor has reproduced an apple tree, a plant variety, that is distinct in color, taste, and smell. However, this kind of variety already exists in the marketplace of the United States, for more than a year before filing the patent application of the same. Now, under such situations, the inventor of such a variety of plants is rejected to receive protection for that particular plant in question. 

Matsui case (Determining novelty)

Significance of the case

• In Pan-American Plant Company v. Matsui (1977) there involved a flower named, chrysanthemum.
• The United States District Court of California settled the legal principle on what makes the two plants different from each other and provided the standard for differences to determine the unique quality of plants.
• The case involved an inventor, who obtained the plant patent for this flower and later destroyed the flower because it was not fighting the diseases. The inventor, then again created and reproduced the same flower but this time from the patented plant of a third party, and saw that the flower was disease-resistant.
• The Court, to find the unique quality of these two plants in question, determined the differences between their characteristics and description provided in the plant patent application by the inventor and the patented plant. 
• According to the Court, the novel characteristic of the claimed plant that it was free from disease was not mentioned earlier in the plant patent application by the inventor. Thus, it proved that the claimed plant in question was a replica of the patented plant and did not possess any unique quality of its own.

Non-Obviousness

The non-obviousness requirement means that the plant discovered or reproduced through asexual reproduction must not have been obvious to a person of ordinary skill in the art at the time the innovation was made.

35 USC 103- states the reasons why the plant patent cannot be granted to the claimed plant created by the holder or innovator. This includes:

• The existence of similarity between the claimed plant and the patented plant (prior art) that existed in the past. The similarity is a piece of evidence and the general public is already aware of such innovation. 
• The differences between the claimed plant and prior art are so definitive that ordinary individuals excluding experts in that field could easily assess and identify the process through which the plant was reproduced. 

The USPTO will appoint an examiner. The examiner will make sure that both the plants in question possess a unique feature or not and for that following acts will be carried out.

• The examiner will conduct thorough research to find out if the patent, if any, matches the claimed plant or not.

• The examiner should be satisfied that the claimed plant does not confuse the consumers and overlap with the existing patented plant. 
• If the examiner is satisfied that the asexual reproduction process in the claimed plant is unique, then the plant patent will be granted, otherwise would be rejected.

California Florida Plant Crop case (Obviousness principle)

Significance of the case

• In Yoder bros. Inc. V. California Florida Plant Crop (1976), the U.S. Court of Appeals, Fifth Circuit settled the legal principle on the obviousness of what makes a plant special.
• The case again involved the same flower named, the chrysanthemum that we saw in the previous case.
• According to the Court, it was stated that ‘merely reproducing plants without seeds does not qualify the plant for a plant patent.’
• According to the Court, for a plant to be special or new, the characteristics of the plant should be unique along with its reproduction without seeds. 
• Even copying or selling a patented plant  (a piece or whole) without the permission of the source inventor or breeders amounts to the infringement of the patented plant.

Usefulness 

The usefulness requirement means that the plant discovered or reproduced through asexual reproduction must have a specific, substantial, and credible utility.

According to this, if anyone wants to acquire a patent for a new variety of plant, the holder needs to comply with the following requirements:

• The holder needs to make sure that the statutory requirement (as discussed earlier under the heading (“Legal requisite for patentability”) of the plant patent application is fulfilled, and make sure of the fact that whether the plant is patentable or not.
• The holder should be aware that the plant discovered or reproduced through asexual reproduction is useful, real, and has practical applicability as well.
• The holder should ensure that the claimed plant is beneficial for the public good.
• The holder should ensure that the purpose or intention of that new variety of plant for what it was created is fulfilled.

How long does a plant patent last

Did you know that a Plant Patent consists of the same rights as that of utility patents and there is also a limit on the term (time limit) of plant patents? It takes 18 months for the USPTO to publish the plant patent after the application for the same is filed by the plant owner.

Let us understand the provisions in terms of Plant Patents.

Period of limitation for a plant patent

A Plant Patent is granted to the plant owner, his heirs, or his assignee for 20 years from the date the patent application is filed and the right to sue the infringer is also based on this time limit for a plant patent. Therefore, it is important to keep in mind the expiration date of the patent so granted.

According to Part II- Patentability of Inventions and Grant of Patents, Chapter 14- Issue of Patent the provisional rights for patent terms and their contents are covered under 35 USC 154.

Provisional rights for plant patent term

Any special treatment or priority under 35 USC will not affect the 20-year terms for the plant patent acquired by the innovator from the following:

• 35 USC 119 (a)– Any inventor, his assignee or legal representative of a new variety of plant is filing a patent application in a foreign country (his/her country), whose patent laws are similar to the U.S. then under such circumstances the inventor can file for a plant patent application in the U.S. within 12 months of their foreign filing. Such an application will have the same effect as if it was filed in a foreign country. If there is a delay in filing and such delay is unintentional, then under such situations extra 2 months will be provided for filing the plant patent application in the U.S.        
• 35 USC 365 (a) and (b))- if an inventor had filed an international application for plant protection in any one country other than the U.S., and had also filed such application in accordance with 35 USC 119 (a) and  Patent Corporation Treaty, 1970 (U.S. Patent laws) when applying under the U.S., under such circumstances national plant patent application of such inventor receives the ‘right of priority’ in the U.S. 
• 35 USC 386 (a) and  (b) – if an inventor files a national application in any one country whose laws are similar to the U.S. Patent laws and then later files for plant protection in the U.S. then such national application receives the right of priority in the U.S. These applications receives more benefits from the U.S. law system.

If an inventor’s new variety of plant that is discovered or reproduced through asexual reproduction is already described in a published patent application, then the inventor of such a claimed plant has certain provisional rights guaranteed by 35 USC 154 (d) that include:  

• The right to collect money from others for its use, import, and sale between the time frame before the plant patent is granted and the plant patent application is published. 
• The above-mentioned right is only applicable:

• When there is a written record of the same and the third party is aware of the information (prior art).
• When the claimed plant is an exact copy of what is mentioned in the published application.
• When the patent application is published through an international treaty.

• The right to take legal action by the plant owner for the infringement on the patented plant is 6 years.
• In case of an application for plant protection to the international treaty, a copy of the same with its translation is needed to be provided to the USPTO by the plant owner.

What are the prepatent implementation rights

The inventor of the claimed plant (discovered or reproduced through asexual reproduction) has the following rights:

• When the written record of the claimed plant is provided by the plant owner, the same can be protected as a Trade Secret through international treaties.
• The protection is only applicable to the claimed plant when the inventor applies for plant protection in the form of an application before other innovators with the USPTO (first come first serve basis).
• The plant owner has the right to file for a provisional plant patent application. 

Expiration of plant patent before the period of limitation

A Plant Patent may expire before the 20-year granted protection period acquired by the plant holder in certain situations. This includes the following:

• The Plant Patent granted by the USPTO is found to be invalid. This can occur during the infringement suit bought by the plaintiff (source innovator) against the defendant (competitor). These are the parties in dispute whereby the defendant succeeds in proving that the claimed plant in question is itself invalid. 
• Invalidity occurs when the patent applicant has hidden the material fact from the USPTO about the existence of the claimed plant to be a prior art (same variety of plant produced through asexual means) while applying for plant protection. Thus, committing ‘fraud or illegal acts’ by the inventor makes the plant patent expire sooner than its acquired legitimate date.

Maintenance fees are not required for design plant patents or statutory invention registrations.

What happens when the right for plant patent expires

Once the 20-year period has expired, the Plant Patent is no longer in force and anyone is free to use the plant variety. This means that the Plant Patent is now a public property that can be enjoyed without paying any royalties to the source innovator.

However, there is a catch to this. There is one right that is still reserved with the patented plant owner and this right is to bring infringement suits. The statute of limitations is extended long beyond the plant patent expiration. 

The renewal of the Plant Patent term (extension), is covered under the provisions of 35 USC 156 of the PPA law. 

Inventorship in Plant Patents

The term inventor refers to an individual who has invented a new variety of plants. This means that the inventor must have reproduced the new variety of plants using asexual means, such as cuttings, grafting, or other means. This has to take place independently and without help from others to be eligible for a Plant Patent, but that is not just it.

To develop a new variety of plants (plant invention), sometimes there may be multiple steps involved as such. The individuals who collectively have a role or a part to play in inventing or discovering the plant invention, together are referred to as ‘joint inventors.’ This means that If the invention was the result of collaboration or help from others, then all of the collaborators should be named as inventors. In other words, if a group of staff or collaborators contributed to the final plant invention, everyone would be considered co-inventors. 

Joint inventorship 

According to 35 USC 116 (Joint inventorship), two or more individuals can apply for joint patent ownership for a new variety of plants. The oath provided by both inventors should be separate and related to that plant’s patent application.

The inventor can apply for the patent jointly even under the following conditions:

• They did not physically work together or even at the same time to create a new variety of plants.
• They did not make the same amount of contribution to create a new variety of plants.
• They did not contribute to each of the aspects of the creation of a new variety of plants.

The MPEP 2109.01 provides detailed provisions in respect of the requirements to be fulfilled by the inventors for the application of joint plant patent inventorship.

What are the different forms of joint inventorship

Sole-inventor

The individual who reproduces or discovers a new variety of plants (an exact copy of a plant without changing its original features) is referred to as the sole inventor. For example, an individual finds a flower with unique color and shape while hiking through a forest and asexually reproduces the plant. This discovery makes that individual the sole inventor of that flower.

Co-Inventor

Similar to the sole inventor, but if an individual discovers a new plant and passes it to another individual for asexual reproduction of that discovered plant (for creating an exact copy of a plant, similar to that of the original plant), then under such circumstances the second person becomes the co-inventor of that discovery. 

For example, Zoe finds a plant in the forest while hiking and passes that discovered plant to her friend named Cathay, and she further invents and reproduces a new variety of plants. This makes Cathy a co-inventor.

Group efforts

Similarly, if the sole inventor and the co-author together and along with other botanists, or group of staff, or collaborators contributed to the reproduction process and the discovery of the new plant, then under such circumstances every individual is considered a co-inventor (group collaborations). For example, Zoe and Cathy along with other collaborators, worked together and created new flower traits.

Non-group efforts

An inventor may, however, direct that the step of asexual reproduction be performed by a custom propagation service or tissue culture enterprise. Those performing the service would not be considered co-inventors. This means that when the source inventor, hires some other individual to asexually reproduce or for the discovery of a new variety of plant with the help of a special technique, then such individuals or collaborators are not considered to be the co-inventor for that said plant. This is simply because they are following the orders of the sole inventor and not contributing their personal touch to the discovery or for an asexual reproduction of a new variety of plants.

The requirement for inventorship in plant patents

Some of the requisites of the inventorship in the plant patents include:

• The application for a plant patent filed by the inventor or joint inventors of a plant patent before September 16, 2012, should be according to Title 37 CFR 1.41 (Inventorship)
• The corrections under the inventorship of plant patent application should be done according to Title 37 CFR 1.48 (corrections of inventorship in patent applications under 35 USC 116).
• The mistakes in the application for plant patents for 35 USC 101 (inventions patentable) and 35 USC 115 (inventors oath or declaration) will be corrected by a patent examiner according to the Manual of Patent Examining Procedure (MPEP) 2157. The MPEP is a guidebook for patent examiners maintained by the USPTO.

The key aspects of inventorship in plant patents 

The key aspects for inventorship in plant patent application filed by the plant owner involve the following requirements:

Naming inventors  

According to MPEP 37 CFR 1.41 (Applicant for patents):

• The Plant Patent application by the inventors or joint inventors must be applied for in their names (who discovers and invents the new variety of plants).
• The MPEP 602.01 provides detailed information regarding the naming of inventors. 

According to MPEP 37 CFR 1.64 (Person making oath or declaration):

• The application for a Plant Patent (other than a provisional application) by the inventor or the joint inventors must be accompanied by an oath or declaration statement under that application as a piece of evidence. Each co-inventor is required to file a separate oath and declaration statement.
• The requirements for an oath or declaration are to be fulfilled following the provisions of MPEP 602.01 (a) and (b).
• This provision makes it necessary to recognize the contributions made by the co-inventors.

Re DeBaun case (Inventorship claims)

Significance of the case

• In Re Kenneth W. v. DeBaun (1982), the United States Court of Customs and Patent Appeals established the true meaning of what it means to an inventor during the claim for a plant patent (inventorship).
• According to the Court, there is a difference between the inventor who invents a single element of an invention and an inventor who invents the invention because of those single elements as a series of combinations.
• According to the Court, the inventor of a single element of the invention also deserves credit for his/her invention. The one who applied for the patent cannot acquire the due credits of their co-inventors.

Contribution of inventors

According to this, to be an inventor or holder of a new variety of plants discovered or reproduced through asexual reproduction, the main focus is on the key question. The question is who thought of the idea of discovering or reproducing a new variety of plants?

The MPEP 2138.04 – 2138.05 provides a detailed description of what amounts to contribution for inventions by innovators.

To be an inventor or holder of the claimed plant, one must be a contributor to that main idea. There can be more than one inventor or co-inventor who came up with the idea of creating a variety of plants. This means that the original concept of creating a new variety of plants (without seeds) must be presented as a piece of evidence to the USPTO. Simply working on the main idea, does not amount an individual to being an inventor.

Cases of contribution for the claimed inventions

• In Fiers v. Reveal (1993), it was established by the U.S. Court of Appeals, Federal Circuit that to be an inventor, one must have contributed as part of the creation of the main idea (claimed invention). 
• The same (requirement of contribution to the claimed invention for joint inventorship) was also established in the case of Re Verhoef (2018), by the U.S. Court of Appeals for the Federal Circuit.
• In Board of Education v. American Bioscience (2003), the U.S. Court of Appeals, Federal Circuit stated that general knowledge about the claimed invention is insufficient to claim joint inventorship for a plant patent. 

Other aspects 

The inventorship in plant patent applications filed by the plant owner involves other aspects of requirements. This includes- 

• Novelty and distinctiveness (as discussed earlier under the heading “Patentability of plant patents”).
• Asexual reproduction (as discussed earlier under the heading “Plant patent in American law”).
• Joint inventorship (as discussed under the heading “Inventorship in plant patents”).
• A Patent application.
• Proper documentation.
• Legal and ethical considerations.

How to get a Plant Patent

The process of obtaining a Plant Patent is similar to the process of obtaining any other type of patent. This includes the following:

• First, the inventor must prepare a patent application that includes a detailed description of the new variety of plants and drawings of the plant.
• Second, the patent application must also include an oath or declaration that the invention is new, distinct, and reproducible asexually. 
• Third, the patent application must also include an information disclosure statement that lists all of the prior art that the inventor is aware of that is related to the invention.

Once the patent application is filed, it will be examined by the USPTO and if all of the requirements are met, the patent will be granted.

However, one thing to always keep in mind is that before applying for a plant patent application, one must always refer to the official website of the USPTO. This is because the laws and the fees that are required to be filed by the plant holder or plant inventor keep on changing from time to time and it is necessary to stay updated with the current developments, otherwise, one can lose their rights. The application may even be rejected by the USPTO if the information is not correctly presented.

Let us understand this process through steps provided in the MPEP and as established by the USPTO.

Preparation of the plant patent application

To acquire the Plant Patent for a new variety of plants reproduced through asexual means and discovered in a cultivated area by the plant owner involves a two-step process. This step has to be done before applying for a plant patent. If this step is not carried out before the filing, then the same can be rejected by the USPTO on account of ‘pre-maturity or lack of nonstatutory’ requirements.

Creation step

The first step involves finding and recognizing a new variety or special variety of plants by the plant owner. This happens during the exploration by a plant owner in a cultivated area say on a farm or in a garden. The discovery of a unique plant can happen through either human efforts (fusion of two plants on purpose) or changes in the plant genes.

Reproduction step

The second step involves the reproduction process. The plant owner must asexually reproduce the claimed plant for a patent (reproduction without seeds). This step helps the examiner to make sure that the claimed plant is not a result of any ‘sickness or infection.’ The importance is provided to the genes of the plants and not other external contributing factors for their uniqueness.

What are the steps to be followed for acquiring a plant patent 

According to MPEP 37 CFR 1.161- 1.167, the inventor or holder of a new variety of plants, discovered or reproduced through asexual modes of reproduction needs to follow certain rules and regulations while applying for the application of a plant patent.

Rules applicable for plant patents

According to MPEP 37 CFR 1.161, the same rules are applicable for applying a plant patent that applies to acquire patents of inventions and discoveries. This is well articulated throughout this article.

Oath and declaration of patent owner

According to MPEP 37 CFR 1.162 in the application to acquire a plant patent:

• The plant owner has to be the one who invented, discovered, and asexually reproduced the new variety of plants, or
• The plant owner has to comply with the rules as provided under MPEP 37 CFR 1.42 (Applicant for patents), 1.43 (Application for patent by a legal representative of a deceased or legally incapacitated inventor), and 1.47 (Filing when an inventor refuses to sign or cannot be reached). 
• The oath and declaration statement along with the additional averments as required by MPEP 37 CFR 1.63, has to state that the plant owner is the one who carried the reproduction process through which the new variety of plant was developed.
• The oath and declaration statement by the plant owner also has to state that a new variety of plants was discovered in a cultivated area.

Elements of plant patent

According to the MPEP 37 CFR 1.163 (Specification and arrangement of application elements in plant application), the application to acquire a plant patent should be in the following manner:

• The application should contain specifications. These specifications should be complete, disclosing everything regarding the new variety of plants. This information helps to distinguish from the existing varieties of the plant in the marketplace. This includes:

1. The characteristics of the claimed plant.
2. When, and in what manner the claimed plant was asexually reproduced.
3. The location where the claimed plant was discovered.
4. The condition of the area where the claimed plant was discovered etc. 

• The elements of a plant patent application should be applied according to this order. It includes

1. The transmittal form for plant application.
2. Fee transmittal form.
3. Application data sheet (MPEP 37 CFR 1.76).
4. Specifications.
5. Drawings. 
6. Oath and declaration (MPEP 37 CFR 1.162).

Arrangement of the specifications of a plant patent application

The ‘section heading’ of these applicable provisions should be written in ‘UPPERCASE.’ It should not be underlined or written in bold. The specification of a Plant Patent application must be arranged in the following manner:

Title of the invention 

This forms the introductory part of the application and includes information regarding name, citizenship, and residence proof. The title must refer to the entire plant and not just the fruit.

Proof of the existence of a related plant application

This is required if, the information is missing under the application data sheet. The related applications must include the following:

1. A separate (utility) application from an earlier application of a similar kind of plant.
2. A separate application not linked to a previously rejected application for a new variety of plants.

Statement of proof of funding 

This is required if the research or development is federally sponsored (government-funded projects).

The Latin names of the plant claimed

The Latin name has to be provided by the plant owner in the application regarding the genus and species of the new variety of plant from which it was asexually reproduced and developed.

Background of the invention

Invention Field

The field of the invention (A new variety of plants reproduced asexually or discovered in a cultivated state) has to be specified for a better understanding to ‘identify the botanical and market class of the invention, and how the same can be used.’

Description of prior art

The Plant Patent application must include the description of the prior art (as earlier discussed under the heading “Novelty”).

According to MPEP 37 CFR, the application must include provisions of 1.97 (disclosure statement of filing information) and 1.98 (disclosure statement of content information).

Summary of the invention

The application for a Plant Patent must include the distinct characteristics of the claimed plant or the traits of the claimed plant that help the examiner distinguish what makes the claimed plant so unique. 

Brief description of the drawing

A separate brief description must be included in the application to explain the contents or figures of the drawings. This includes ‘characteristics of bark, flower, and/or fruit are distinguishing, the part of such plants should be explained through one or more drawings.’

A Detailed description of the Invention

The application for a Plant Patent must include a detailed description of the botanical features of the claimed plant. This is done to prevent others from claiming the same plant at a later date and to preserve the unique features of the same. This feature specifies the following:

1. Scientific name, genus, and species of the claimed plant.
2. How the claimed plant grows, its shape, and how it branches out.
3. Whether the claimed plant slumbers in winter or not.
4. The feature must also specify the written descriptions of the claimed plant such as ‘bark, buds, blossoms, leaves, and fruit.’ The features like ‘fragrance, taste, disease, resistance, productivity, rapid growth, and strength’ must also be included.

A claim for a plant patent

According to MPEP 37 CFR 1.164, A ‘claim’ is a formal written statement regarding the new variety of plants discovered or reproduced asexually. These statements contain specifications, descriptions, and characteristics of the new plant. There is only one claim for a single plant.

The claim must be of a plant or a tree and not of a fruit or a flower.

The provision of claim and description for the claimed plant is also provided under 35 USC 162 (as discussed earlier under the heading “USC Title 35 Plant patents”).

Abstract of the specifications disclosed

The abstract provides an overview of the claimed plants’ special features, traits, and characteristics. This helps the examiner to differentiate what makes the claimed plant interesting from other plants present in the market.

Drawings in plant patent application

According to MPEP 37 CFR 1.165 drawings of the plant must also be included in the Plant Patent application for better understanding. This includes the following:

• The drawings must be accurate and must show the features of the new variety of plants that are described in the specification. 
• The drawings of the plant in the plant patent application must comply with the MPEP 37 CFR 1.84 (Standard for drawings).
• The drawings must also be labeled with reference numerals that correspond to the features described in the specification. This must only be provided when asked by the examiner, and not otherwise.
• The drawings must include the distinctive characteristics of the plant that can be reduced to visual representation in the plant patent application.
• The drawings could be in color (Permanent watercolor renderings) if they show the differences (unique features) between the new plant and the other plants.
• The drawings of the plant in the plant patent application should be submitted along with two color copies of the drawings and photographs of the same if, the variety of plant is in color.

Specimens in plant patent application

According to MPEP 37 CFR 1.166, the examiner can ask the plant holder to submit the following for study and inspection matter: 

• The specimens of the claimed plant, flower, or fruit.
• These specimens can be asked in quantity, and at a stage of its growth as required.
• The specimens are further sealed, packed, and transferred to a secure location for examination, and instructions of the same are provided to the plant owner.
• For the specimens that cannot be transferred for examination, an official inspection of the same where the plant is grown is carried out by the examiner.

The provisions of specimens for plant patent application are also provided under 35 USC 161 (as discussed earlier under the heading “USC Title 35 Plant patents”) and 35 USC 144 (Appeal decisions) covered under Chapter 13 Review of Patent and Trademark Office Decisions.

Examination of plant patent application

According to MPEP 37 CFR 1.167, once the application for the plant patent is filed, it will be examined by the USPTO. The examiner will review the application and determine whether or not all of the requirements for patentability have been met.

According to 35 USC 164 (as discussed earlier under the heading “USC Title 35 Plant patents”) the application will be passed to the USDA, Agricultural Research Service, or the Horticultural Research Branch for further study and report.

Examination of a Plant Patent application is similar to the utility patent requirement (as discussed earlier under the heading “Legal requisite for patentability”). 

The examiner will even conduct a patent search for the evidence of prior art (as discussed earlier under the heading “Prior art or prior public knowledge”).

According to 35 USC 102, If the examiner finds that the invention is patentable, the patent will be granted.

According to 35 USC 112, If the examiner finds that the invention is not patentable, the patent application is rejected, and the inventor needs to amend the application or appeal the decision.

Other modes through which plants are protected

In America, plants and their variables are protected through the PPA of 1930 and PVPA of 1970 as we discussed earlier in this article. Did you know that these are not the only laws through which plants can be safeguarded from infringement?

There are other means through which plants can be guarded from exploitation. This includes

Utility patents

The provisions of utility patent laws are available for the plant that is accepted for a grant of patent and is eligible when the plant is related to the innovation including ‘genes, traits, methods, and parts of the plant.’

The right to be protected under these patent laws is granted by the USPTO.

Trade secrets 

• This form of protection is related to the vital and pivotal information or data related to the new variety of plants.
• Trade secrets provide an upper hand of protection to the holders of the plants like a two-factor authentication. 
• The reason is that the information is not shared publicly, there is no expiration date on the plant as it exists under PPA and PVPA laws, and it remains a secret forever.

International Union for the Protection of New Varieties of Plants

• Another interesting way through which the plant owner can protect a new variety of plants is through the International Convention.
• The convention is administered by the International Union for the Protection of New Varieties of Plants (UPOV) and is a form of a treaty signed by various nations to regulate and promote the development of ‘new varieties’ of plants.

International Treaties on Plant Genetic Resources for Food and Agriculture

• The U.S. joined another treaty in the year 2017 called the International Treaties on Plant Genetic Resources for Food and Agriculture (ITPGRFA).
• Under this treaty, there is an exchange of special kinds of plant seeds between various countries to promote and cultivate plant seeds for the sources of food. 
• The USPTO acts as a guide and further makes the rules and regulations for a swift and effective exchange of plant seeds. 
• The USPTO also handles the farmer’s ownership rights related to the crop or plants.  

Conclusion

There are already different varieties of plants and crops existing in nature and on top of that, scientists, plant breeders, and even ordinary citizens are developing and creating ways to exploit these varieties to plants to create a unique variety of plants or crops altogether. Some plants are found accidentally, while others are intentionally created by the breeders for the economic development of the country. Whatever the reasons, these plants are somehow exploited one way or the other. Therefore, it is necessary for a source plant owner to acquire the patent over these newly discovered and asexually reproduced plants for their protection. 

Plants do possess medicinal properties as well as poisonous properties that can be applied either for the good or the bad and to have a patent over a plant makes both the plant owner and the plant to be legal, safe, and valid in the eyes of the law. In absence of patents over plants can put plant owners in grave danger and may even cause them to lose their rights over the said plant. Therefore, it is advisable to lay down proper, clear, and accurate detailed information regarding the plant in question when filing for a plant patent application with the USPTO.

Frequently Asked Questions (FAQs)

What is a plant patent?

A Plant Patent is an Intellectual Property Right of protection provided by the U.S. Patent and Trademark Office (USPTO) to the plant owner or inventor of a new and distinct asexually reproduced plant. To obtain a plant patent, the variety of plant must be novel, distinct, and asexually reproduced.

How is a plant patent different from a utility patent?

A Plant Patent is especially for the protection of a new variety of plants whereas a utility patent is a protection for new and useful processes, machines, compositions of matter, or improvements. The plant holder has the exclusive right to sell, use, and distribute the patented plant variety.

How long does a plant patent last?

A Plant Patent lasts for 20 years from the date of applying for a plant patent. There is no maintenance fee charged for plant patents.

Can a plant discovered in the wild be patented?

No, plants that are naturally existing in nature do not receive a right to be patented. Only plant varieties that result from human intervention and asexually reproduced plants receive the right to a patent from the government. 

Can one apply for a plant patent internationally?

The Plant Patent is specific to the U.S. but one can protect their plant through various international treaties such as the International Union for the Protection of New Varieties of Plants (UPOV), International Treaties on Plant Genetic Resources for Food and Agriculture (ITPGRFA), and trade secrets. For protection in every country, a separate application for a plant patent needs to be filed by the plant owner.

What is the difference between a plant patent and a plant variety certificate?

A Plant Patent is limited to the territories of the United States. It provides the exclusive right of protection for a new variety of plants within the United States. Plant Variety Protection (PVP) certificate, on the other hand, is an IPR that offers protection internationally to a new variety of plants. This is governed by the UPOV Convention.

What are the exceptions related to plant patents?

The plants that are the result of tuber propagated means or plants that are found in uncultivated states are ineligible to receive protection under the U.S. Patent laws.

Can genetically modified plants be patented?

Yes, genetically modified plants (hybrids or mutants) are eligible to be patented as long the legal requisite of the patentability is fulfilled by the plant owner.

What is the purpose of the Manual of Patent Examining Procedure, and where to access MPEP?

The Manual of Patent Examining Procedure is a guidebook published by the USPTO. It serves as guidelines and rules for patent examiners and practitioners for examining plant patent applications. It is available on the official website of the USPTO.

References

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• https://www.mondaq.com/unitedstates/patent/810420/plant-variety-protection-act-now-covers-asexually-reproduced-plants?login=true&debug-domain=.mondaq.com 
• https://books.google.co.in/books?hl=en&lr=&id=8d2_EAAAQBAJ&oi=fnd&pg=PP5&ots=9iZEa8WMoU&sig=auJX7DdgV48YxzF7AmS8BG6a9r4 
• https://www.russianlawjournal.org/index.php/journal/article/view/2349 
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• https://www.jstor.org/stable/10.1086/518192 

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