Intellectual Property Protection for Plants

February 2009

There are three possible avenues for protecting plant-related inventions. The first is to obtain a plant patent. A plant patent is a different than a utility patent (which is what most people think of when they think of a patent) and a design patent (which protects the way something looks and is similar to copyright protection). A plant patent can be obtained for an asexually reproduced plant that represents a new and distinct plant variety. In this context, the term "asexually reproduced" refers to plants that are reproduced by means other than from seeds. The new plant variety must have occurred in cultivation; plants that are found in an uncultivated state are excluded. Tuber-propagating plants are also excluded under the Plant Patent Act.

The term of a plant patent is 20 years from the date of filing (same as for a utility patent), but unlike a utility patent, no maintenance fees are required. Algae and macro fungi are considered plants, but bacteria are not. The new plant variety must possess at least one distinguishing characteristic that is not attributable to growing conditions or fertility levels. Furthermore, the inventor must not only discover the new plant variety but also asexually reproduce it—to prove that the plant is stable. Inventors are encouraged to observe all parts of the plant through at least one growth cycle prior to filing.

An application for a plant patent must include as complete a botanical description of the plant as possible, including the Latin name of the genus and species of the plant and the variety denomination. Drawings must be artistic as opposed to utilitarian so as to convey the distinguishing features of the plant. Photographs and watercolor paintings are accepted. If color is a distinguishing characteristic, then the drawings must be in color. If foliage, bark, flowers and/or fruit are distinguishing characteristics, then they too must be shown in the drawings. Specimens (or deposits of plant material) are usually not required.

The botanical description of the plant must include the plant’s growth habitat, shape at maturity, and branching habit. If applicable, the characteristics of the plant in winter dormancy should be described. Features such as fragrance, taste, disease resistances, productivity and vigor must also be discussed.

As with utility patents, public use or sale of the invention for more than a year prior to the filing date will result in a loss of the right to obtain a patent; however, unlike utility patents, a publication that pictures and describes the claimed plant published more than one year prior to the filing date is not disqualifying because it is not enabling (i.e., it does not enable anyone to make and use the invention).

The second way to protect a plant-related invention is by obtaining a utility patent. Utility patents cover practical applications of plant material and/or products generated by plants (for example, the use of a certain type of plant material in a pharmaceutical preparation). Utility patents for plant-related inventions must meet all the usual criteria for patentability, namely, usefulness, novelty and nonobviousness. Things that exist in nature (like uncultivated plants) may not be the subject of a utility patent.

Thirdly, plants can also be protected under the Plant Variety Protection Act (the “PVPA”). Under the PVPA, inventors receive a breeder’s certificate rather than a patent, although the rights conferred on breeders are similar to the rights afforded patent holders. The breeder’s certificate gives the holder the right to exclude others from selling, offering for sale, reproducing, importing, or using the protected variety in producing a hybrid or different variety. The term of the certificate is 20 years from the date of issue, except in the case of trees and vines, which carry a 25-year term. The PVPA applies only to sexually reproducing plants, and it includes tuber-propagating plants; it does not include uncultivated plants.

The PVPA contains three exemptions: the public interest exemption, the research exemption, and the crop exemption. The public interest exemption gives the United States Department of Agriculture the right to require a breeder to license a given variety if necessary to insure an adequate supply of fiber, food or feed. The research exemption allows researchers to use protected varieties strictly for research purposes. And the crop exemption allows farmers to grow and keep seed of protected plant varieties on their own farms; however, they may not sell or trade protected varieties to another farmer (a practice commonly referred to as “brown-bagging”).

More than one form of protection may apply to the same invention. For example, an asexually reproducing plant may be covered by both a plant patent and a utility patent. Similarly, a sexually reproducing plant may be covered by the PVPA and a utility patent. Inventors would be well advised to consult with a patent attorney to ensure that the appropriate forms of protection are pursued in a timely manner.


Amicable photo of Toni

Antoinette M. Tease, P.L.L.C.