WEB PATENT NEWS--January, 2002
by Robert M. Hunter, Registered Patent Agent
News about patents, licensing and seed capital sources for inventors and innovating organizations.
I. PATENTING PLANT LIFE - The U.S. Supreme Court has confirmed that utility patents can be used to protect plants, plant parts and seeds. Options for intellectual property protection of plants are described.
II. CLAIMING PLANTS IN PATENTS - Examples of claims in issued patents illustrate the wide scope of intellectual property protection afforded by patents on plants.
I. PATENTING PLANT LIFE
On December 10, 2001, the U.S. Supreme Court confirmed that utility patents can be used to protect plants (99-1996). While the U.S. Patent and Trademark Office (USPTO) has issued utility patents on plants, plant parts and seeds for at least 16 years, the court’s recent decision settles the controversy that has surrounded the practice. Now that another way to protect intellectual property in plants has been officially added to a plant grower’s arsenal, it seems appropriate to review those options and highlight their advantages and disadvantages. This review also explains utility patent protections for all inventions, including plants.
In the U.S. today, there are three ways to protect plants per se: plant patent, plant variety certificate and utility patent. A plant patent covers plants, other than tuber-propagated plants, that can be reproduced asexually (without seeds), e.g., by rooting, layering, budding, grafting, etc. Plants capable of sexual reproduction are not excluded from plant patent protection as long as they have also been asexually reproduced. A plant variety certificate covers seed-propagated and tuber-propagated plant varieties, as well as any variety that is essentially derived from a protected variety and any variety whose production requires the repeated use of a protected variety. A utility patent covers all types of plants that are reproduced in any way, as well as plant parts and seeds and processes involving those materials.
According to the USPTO’s Manual of Patent Examining Procedure, “as provided in 35 U.S.C. 161, the rights associated with a plant patent include the rights associated with a utility patent, and the ‘right to exclude’ has additional terms provided in 35 U.S.C. 163” (MPEP 1601). Thus, in addition to the protections conferred by a utility patent, under 35 U.S.C 163 the single formal claim to a plant “substantially as illustrated and described” in a plant patent issued by the USPTO is also infringed by asexual reproduction of a claimed plant in the U.S., by using, offering for sale or selling all or part of the claimed plant in the U.S. or by importing all or part of the claimed plant into the U.S. In explaining the reach of 35 U.S.C. 163 (as that section existed in 1995), the Court of Appeals for the Federal Circuit opined that, “for the purposes of patent infringement, the patentee must prove that the alleged infringing plant is an asexual reproduction, that is, the progeny of the patented plant” (99-1035). In the opinion mentioned above, the Supreme Court noted that “an exclusive right to asexual reproduction was the only type of coverage needed and thought to be possible given the state of plant breeding at the time” the Plant Patent Act was passed in 1930.
A plant patent application must contain a disclosure of the plant and the characteristics thereof that distinguish it over related known varieties, and its antecedents, and must particularly point out where and in what manner the variety of plant has been asexually reproduced. For a newly found plant, the specification must particularly point out the location and character of the area where the plant was discovered. The written description requirement that applies in the case of utility patents is relaxed in the case of plant patents in that a description in a plant patent application is adequate “if the description is as complete as is reasonably possible.” No deposit of biological material is required, but a prerequisite to applying for a plant patent is asexual reproduction of the claimed plant by the inventor. The claimed plant can have originated as a cultivated sport, mutant, hybrid or newly found seedling, but the plant cannot have been found in an uncultivated area (the principle being that plants found in nature are “products of nature” and, hence, are unpatentable). The claimed invention must be a distinct and new variety of plant, not just a new variety of a flower or fruit. The term of a plant patent is 20 years from the filing date of the application.
A plant variety certificate issued by the U.S. Department of Agriculture (not the USPTO) under 7 U.S.C. 2321 is infringed by selling or marketing of the protected variety, importation of the variety into, or exportation from, the U.S., sexual multiplication or tuber propagation of the variety as a step in marketing, use of the variety in producing (as distinguished from developing) a hybrid or different variety, dispensing the variety without notice that the variety is protected and actively inducing another to perform any of the foregoing acts. It is not infringement to use a protected variety for research or in development of a hybrid, but a license must be obtained from the owner of a protected variety in order to commercialize any progeny plants that are "essentially derived" from the protected variety. Furthermore, a farmer who legally purchases and plants a protected variety can save the seed from these plants for replanting his own farm.
A plant variety may be represented by seed, transplants, plants, tubers, tissue culture plantlets or other matter. A prerequisite to applying for a plant variety certificate is sexual reproduction or tuber propagation of the claimed plant by the inventor. Under 7 U.S.C. 2402, the variety need not be useful or nonobvious, but it cannot have been sold in the U.S. by a breeder within one year of filing date or outside the U.S. within four years of filing date (six years for vines and trees). The protected variety must be new, distinct, uniform and stable. It must be clearly distinguishable from any known variety, its variations must be describable, predictable, and commercially acceptable, and when reproduced, the variety must remain reasonably unchanged in essential characteristics. The inventor must agree to deposit a viable sample of the seeds of the variety (2,500 seeds) in a public depository, but neither the statute nor applicable regulations mandates that such material be accessible to the general public during the term of the certificate, which is 20 years from date of issue of the certificate, 25 years for a tree or vine. In the case of a first generation hybrid, seeds of the parents must also be deposited.
A utility patent issued by the USPTO under 35 U.S.C. 101 is infringed by making, using or selling a claimed invention in the U.S., actively inducing another to infringe in the U.S., selling an important part of a claimed invention in the U.S., supplying an important part of a claimed invention for assembly of the invention outside of the U.S. and importing into the U.S. a product made by a process that is patented in the U.S. A utility patent on a claimed inbred plant, for example, can protect that line as well as all hybrids produced by crossing that inbred plant with another plant line, a protection not conferred by a plant variety certificate. A utility patent on a claimed hybrid plant can protect the plant, its seeds, variants, mutants and trivial modifications of the hybrid. If a plant that is not found in a purfied form in nature (e.g., a microscopic plant) is isolated from nature, it is also protectable with a utility patent. There are no exemptions that allow research or saving seed under a utility patent.
A plant, plant part or seed or a process involving plant materials for which a utility patent is sought must be useful, novel and nonobvious. These are the same criteria that apply to other types of inventions patentable with a utility patent. The utility patent application must describe the plant with specificity and enable others to “make and use” the plant after the patent term expires. The description requirement for utility patents includes a requirement for a deposit of biological material (e.g., seeds or tissue culture), if the biological material is required to practice the invention. In contrast to a plant variety deposit, a deposit made in association with a utility patent application must be accessible to the general public during the term of the patent. No deposit is required if the biological material is known and readily available or if it can be made or isolated without undue experimentation. The USPTO accepts commercial availability as evidence that a biological material is known and readily available only when the evidence is clear and convincing that the public has access to the material at a reasonable price. The term of a utility patent is 20 years from the filing date of the application.
From the above, it is clear that the requirements for obtaining and the protections provided by a utility patent are generally greater than those of either a plant patent or plant variety certificate. A plant breeder must balance the advantages and disadvantages of these options in deciding how to protect his new plant. If appropriate disclosure requirements can be met, more than one method of protection can be used, if desired. With the recent decision of the Supreme Court, the following admonition of Thomas Edison is finally understood to have been true all along, even before the passage of the Plant Patent Act, that he was encouraging Congress to enact: “Nothing that Congress could do to help farming would be of greater value and permanence than to give the plant breeder the same status as the mechanical and chemical inventors now have through the law” (94-1450).
II. CLAIMING PLANTS IN PATENTS
The scope (legal boundary) of intellectual property protection afforded by a patent is defined (and limited) by the wording of the claims of the patent. The claims are those sentence fragments at the end the patent that follow the words “I claim:,” “We claim:,” or “What is claimed is:.”
Claims to plants in plant patents and in utility patents differ in form and scope. Because a plant patent is granted on the entire plant, only one claim is necessary and only one is permitted. A method claim in a plant patent application is improper. An example of a proper claim for a plant in a plant patent is “A new and distinct variety of hybrid tea rose plant, substantially as illustrated and described herein.”
Because a claim in a utility patent is limited only by the requirements that it be definite, supported by the patent disclosure and cover only one class of inventions (e.g., product or process), a great variety of types of claims may be present in a utility patent that covers a plant. Following are examples of claims to plants that have appeared in issued U.S. utility patents:
U.S. Patent No. 5,491,295: The following claims were supported by the deposit of seeds: 1. A hybrid corn plant designated as 3394 and its parts, and having ATCC accession number 97224. 2. A tissue culture of regenerable cells of the plant of claim 1 wherein the plants regenerated from the culture have all the physiological and morphological characteristics of 3394. 3. A corn plant regenerated from the tissue culture of claim 2 and having all the physiological and morphological characteristics of hybrid 3394. 4. A tissue culture of a plant according to claim 2, wherein the tissue is selected from the group consisting of leaves, pollen, embryos, roots, root tips, anthers, silk, flowers, kernels, ears, cobs, husks, stalks, cells, and protoplasts thereof. 5. A hybrid corn plant having all the physiological and morphological characteristics of 3394, ATCC accession number 97224. 6. Seed produced by a hybrid corn plant designated as 3394, said hybrid corn plant having ATCC accession number 97224.
U.S. Patent No. 5,936,143: The following claims were supported by the deposit of seeds: 3. Pollen of the synthetic hybrid corn plant of claim 2. 7. A method for producing a synthetic hybrid corn seed designated P66, having ATCC accession No. 209428, comprising the steps of: (a) planting in pollinating proximity seeds of corn synthetic lines P66A, having ATCC accession No. 209427 and P66B, having ATCC accession No. 209426; (b) cultivating corn plants resulting from the planting until the time of flowering; (c) emasculating the flowers of one of said synthetic lines P66A or P66B; (d) allowing natural cross pollination to occur between the synthetic lines; and (e) harvesting seeds produced on the emasculated plants of the synthetic line. 12. Corn grain produced by the interplanting of the synthetic hybrid corn seed of claim 1 with a male sterile hybrid corn seed comprising the steps of: (a) planting, in pollinating proximity, seeds of synthetic hybrid corn plant P66 and seeds of a male sterile corn hybrid; (b) cultivating corn plants resulting from the planting; (c) allowing the P66 corn plants to pollinate the male sterile hybrid corn plants; and (d) harvesting the resulting corn grain from all plants.
U.S. Patent No. 6,156,959: The following claims were supported by the deposit of seeds: 1. An Easter cactus seed designated `Avalon` S1 and represented by seed deposited as ATCC Accession Number 209770. 2. A plant produced by the seed of claim 1. 3. A flower produced by the plant of claim 2. 4. A plant cutting of the plant of claim 2. 5. Progeny of the plant of claim 2, said progeny having a degree of phylloclade branching of about 1.8 to about 2.8, a flower diameter of about 5.7 to about 7.7 cm and a flower color of RHS 74 B/C. 6. The progeny of claim 5, wherein said progeny are obtained by asexual propagation. 7. The progeny of claim 5, wherein said progeny are obtained by sexual reproduction. 8. A method of making an Easter cactus plant, comprising the step of growing a phylloclade segment of an Easter cactus plant designated `Avalon` S1 , represented by seed deposited as ATCC Accession Number 209770, or progeny into said Easter cactus plant. 9. A method of making an Easter cactus plant, comprising the step of growing a seed of an Easter cactus plant designated `Avalon` S1, represented by seed deposited as ATCC Accession Number 209770, or progeny thereof into said Easter cactus plant.
U.S. Patent No. 6,300,547: No deposit was required to support the following claims: 1. A plant of a Mandevilla variety "Rita Marie Green" having at least one double flower. 2. The plant of claim 1 wherein said flowers have outer five parted corolla limbs and inner five parted petaloids, said petaloids overlaying the corolla limbs. 3. The plant of claim 1 wherein said flowers have outer five parted corolla limbs and inner five parted petaloids, said petaloids being shorter than the corolla and remaining in a cluster within outer corolla, forming a tight cluster habit of petaloids generally prohibiting a view of the inner throat. 4. A plant structure derived from the plant of claim 1. 5. A plant produced by propagating the Mandevilla variety `Rita Marie Green` of claim 2. 6. A Mandevilla variety essentially derived from the plant of claim 1, wherein the essentially derived plant displays at least one double flower. 7. A plant part from the plant of claim 1. 8. Plant material from a plant of claim 1 which is capable of reproducing a double flowering Mandevilla plant. 9. A method of producing a double-flowering Mandevilla plant comprising propagating a double-flowering Mandevilla plant of the Rita Marie Green variety to produce a plurality of plants and selecting at least one double-flowering Mandevilla plant from said plurality of plants. 10. Asexually produced progeny of the double-flowering Mandevilla plant according to claim 1.
U.S. Patent No. 6,331,665: No deposit was required to support the following claim: 1. A fertile transgenic Zea mays plant comprising a preselected DNA sequence encoding a Bacillus thuringiensis endotoxin, wherein the preselected DNA sequence is adjusted to be more efficently expressed in maize than the native B. thuringiensis DNA sequence encoding said endotoxin, and wherein said preselected DNA is heritable.
From the above, it is clear that the claims in U.S. utility patents on plants can provide broader protection of plants than the single formal claim allowed in U.S. plant patents. If the disclosure requirements of utility patents can be met (e.g., written description, enablement, deposit of biological material, if needed to practice the invention), consideration should be given to using this approach to protecting intellectual property in plants.
Robert M. (Bob) Hunter, Ph.D.
Licensed Professional Engineer
Registered Patent Agent
65-1116 Hoku'ula Rd.
P.O. Box 2709
Kamuela, HI 96743
tel (808) 885-4194
fax (808) 885-4114