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Grower’s Guide to U.S. Plant Patents

By: Ira Cohen, Esquire, Partner, Henkel & Cohen, P.A., Miami

What is a U.S. Plant Patent?

A U.S. Plant Patent is a patent issued for a newly invented strain of an asexually reproducing plant. United States Patent Law provides for the issuance of a U.S. Letters Patent to anyone who has invented or discovered, and asexually reproduced, any distinct and new variety of plant.

What laws apply to Plant Patents?

As with all other types of patents (to wit, Utility Patents and Design Patents), Federal law applies to Plant Patents. The Plant Patent Act was enacted by Congress some 80 years ago, in 1930. (See Title 25, U.S. Code, §161 et seq.)

What is the historical background of the Plant Patent Act?

The Plant Patent Act was inspired by the work of Luther A. Burbank, the famous American botanist, horticulturist, and agricultural pioneer. Burbank developed in excess of 800 strains and varieties of plants, including plums, prunes, berries, lilies, potatoes, and peaches. Burbank, who held no less than sixteen (16) U.S. Plant Patents (to wit ## 12-16, 18, 41, 65-66, 235, 266-267, 269, 290-291, and 1041), is known for the "Burbank" p/k/a "Idaho" potato, the "July Elberta" peach, the "Santa Rosa" plum, the "Flaming Gold" nectarine, "Royal" walnuts, "Portland" plumcots, "Robusta" strawberries, and "Elephant" garlic, among others incredible edibles.

What types of plants are covered by Plant Patents?

The types of plants subject to a Plant Patent must be distinctly different from other varieties. They can be invented or discovered. Such new varieties of plants include plants which are cultivated, sports, mutants, hybrids, and newly found seedlings. The first U.S. Plant Patent was granted to H.F. Bosenberg for a climbing or trailing rose. Illustrative instances of U.S. Plant Patents include a distinct cultivator of African violet (U.S. Plant Pat. No. 5,383) and a type of almond tree (U.S. Plant Pat. No. 5,382). There are U.S. Plant Patents covering plants from "A to Z", including Agave "Kara's Stripes" (U.S. Plant Pat. No. 19,444) to Zantedeschia "Snow White" (U.S. Plant Pat. No. 19,830), with everything from novel varieties of dahlias, echinacea, geranium, hydrangea, phlox, and viola in between.

What are asexually propagated plants?

Asexually propagated plants are those plants that are reproduced by means other than by seeds. For example, some plants can be reproduced by the utilization of the following techniques: rooting of cuttings, by layering, budding, grafting, inarching, cuttings, division, runners, bulbs, slips, corms, tissue culture, rhizomes, nucellar embryos, and apomictic seeds. The purpose of asexual reproduction is to establish the stability of the plant.

What types of plants are not patentable?

A plant patent cannot be obtained for any tuber-propagated plants. Examples of tuber-propagated plants are the Irish Potato and the Jerusalem Artichoke. In addition, a plant patent will not be issued for a plant found in an uncultivated state.

What is the term of protection for a U.S. Plant Patent?

The term of protection for a U.S. Plant Patent is twenty (20) years, calculated from the date that the Application for a United States Letters Patent is filed with the United States Patent and Trademark Office. (Note: Certain asexually reproduced plants may be protected under the Plant Variety Protection Act of 1970, for periods ranging from 18-25 years; see discussion below.)

What happens at the end of the twenty (20) year Plant Patent term?

As is the case with utility patents, when a Plant Patent as aged for 20 years from the filing date of the patent application, the term expires and the subject matter of the Plant Patent enters into the public domain.

What about algae, macro-fungi, and bacteria?

Algae and macro-fungi both are considered to be plants. Bacteria, however, is not regarded as a plant. (Note: Genetically-altered species of bacterium that do not occur naturally can be patented under a Utility Patent; an example would be oil-eating bacteria.)

What rights are conveyed by a Plant Patent?

The grant of a U.S. Letters Patent for a plant excludes others from asexually reproducing or selling or using the patented plant. It should be noted that a Plant Patent is considered to be limited to one (1) plant or genome. Notably, a spore or mutant of a patented plant would not be considered to be the same genome type and, thus, would not be covered by the Plant Patent for the "parent" plant. It could, however, itself be patented as a separate application, subject of course to its satisfaction of all of the requirements of patentability.

Can a utility patent be granted by USPTO for a plant?

Since 1985, the availability of a Utility Letters Patent, under the Patent Act of 1952, has been extended to plants. However, the seeds cannot be saved, cleaned, planted or sold. Moreover, patented varieties must be sold using the varietal name.

What is the underlying philosophy behind the Plant Patent Act?

In theory, the ability of a person or company to gain an exclusive period of monopolistic exploitation creates the motivation for design creativity and innovative experimentation by breeders of plants and the horticultural industry. Furthermore, in the marketplace, a patented plant tends to command a premium price vis-a-vis consumers.

What is the Plant Variety Protection Act?

In 1970, the Plant Variety Protection Act ("PVPA") was enacted, in order to afford protection for the sexual reproduction of new, distinct, stable plant varieties. (See Title 7 U.S. Code § § 2321-2582.) Under the PVPA, breeders can be granted a Certificate (Note: not a Plant Patent) to secure up to 25 years of exclusive control over new, distinct, uniform, and stable, sexually reproduced or tuber-propagated plant varieties. The term of protection endures for 20 years from the Certificate issuance date, or 25 years in the case of trees or vines. While a protected variety under PPVA cannot be the basis for a Plant Patent, the U.S. Supreme Court has ruled that a sexually reproduced plant protectible under PVPA also satisfies eligibility requirements for a Utility Patent, under the Patent Act of 1952. Plant seeds are now covered by patent as well. Subsequently, in 1994, the Plant Variety Protection Act was amended; among other things, seeds cannot be sold without permission of the patent holder. The U.S. Department of Agriculture has a Plant Variety Protection office located in Beltville, Maryland. Examples of varieties of plants that are protected by a PPVA Certificate include, but are not limited to: alfalfa, artichoke, asparagus, basil, beans, beets, broccoli, buckwheat, cabbage, carrot, cauliflower, celery, cotton, cucumber, eggplant, endive, fennel, flax, guar, hemp, lentil, lettuce, mushroom, oat, okra, onion, peas, peanut, pepper, potato, pumpkin, radish, rice, rye, sunflower, safflower, sage, sesame, shallot, sorgham, soybean, spinach, squash, sunflower, swiss chard, tobacco, tomato, turnip, watermelon, wheat, and wheatgrass.

Are there other forms of intellectual property protection for plant varieties?

Another form of intellectual property protection for plant varieties is the adoption and registration of a trademark for the new variety's name. This is a separate and distinct avenue of intellectual property protection.

Conclusion.

Your producer or agri-business may also derive a benefit from other forms of intellectual property safeguards. Consider, for example, whether your company possesses sufficient, if any, protections, relating to its brand names, logos, marks and/or slogans [think. . . trademarks and service marks]; proprietary, new and useful processes, machines, articles of manufacture, or composition of matter [think. . . utility patents]; Internet Website [think. . . copyright]; advertising and marketing materials [again, think. . . copyright]; or trade secrets.

 

The material contained here represents general legal information. Inasmuch as the law is continually changing, some information set forth here may be out-of-date. Other information may not be applicable in your State or Country. It always is best to consult with a competent Attorney about the business options and legal rights and responsibilities regarding your particular situation or case.

 

About Henkel & Cohen

Henkel & Cohen, P.A. is a Miami, Florida boutique business litigation law firm whose partners hold the highest AV rating from Martindale-Hubbell®. For additional biographical and contact information, please visit the firm's website at www.miamibusinesslitigators.com.