You have a great idea. Is patenting the best way to protect it? How much do patents cost? How do you find out if your idea is patentable?
Robert M. Hunter, Ph.D.
Registered Patent Agent
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This checklist is intended to help you disclose your new plant to the patent practitioner who will arrange for your novelty search and/or prepare your plant patent application. Please mark the page(s) containing each of your answers with the question number. Also, please date and mark each page "CONFIDENTIAL INVENTION DISCLOSURE". If you write well, presenting your answers in the format of a plant application may reduce your costs. Write in the present tense.
Please make sure that a plant patent is the type of protection you want by reviewing this article.
I suggest that you first take a look at some issued U.S. plant patents in your field to gain an understanding of the general level of detail I need and scope of the document I will be preparing. You can do that by performing a Quick Search of the patent database at the USPTO website, if you have not performed a preliminary search already. Type in "6" in the text box labeled "Term 1" and choose "Application Type" in the corresponding text box labeled "in Field 1" and only plant patents will be found by the search.
Here is the chapter of the Manual of Patent Examining Procedure (MPEP 1600) that explains how to patent a plant.
1. What are some suggested titles for the invention?
2. Who thought of the invention? The rule for inventorship in plant patents is “if one person discovers a distinctive plant and another asexually reproduces the plant, the two should jointly apply for a patent.” For each inventor, please provide full legal name, post office address, residence address, telephone number and citizenship and, if available, fax number and e-mail address.
3. What is the latin name of the genus and species of the plant variety?
4. What is the name (denomimation) of the plant variety? The name of the variety is ________.
5. What is the nature of the genus of plant into which your variety falls? What are common biological characteristics of the genus?
6. How was the new cultivar produced?
7. Where and who performed asexual propagation of the new cultivar?
8. If the new variety was found, where was it found and what is the nature of the area?
9. What are the traits that have been repeatedly observed to be characteristics which in combination distinguish the claimed plant from those generally available in commercial cultivation?
10. How would you describe the drawing(s) (photographs) that depict the plant?
Fig. 1 is _____________
11. What is a detailed botanical description of the plant?
12. What color reference did you use in describing the colors of the plant parts, e.g., The Royal Horticultural Society Colour Chart?
13. (This information is just for your patent practitioner.) What are the primary botanical differences between your plant and similar plants?
14. (This information is just for your patent practitioner.) Why do you believe your plant would NOT have been obvious to another inventor working on the same problem at the same time in the light of the existing solutions of others? What is it about your plant would be surprising to others in your field? Do you have evidence (dated documents, etc.) that the plant (as you want it claimed) produces critical or unexpected results, that it has been a commercial success, that others are copying the plant, that it satisfies a long-felt but unsolved need, that others have failed to solve the problem, that experts have been skeptical that the problem could be solved, etc.? (Note that your own activities, e.g., a commercial offer for sale or public use in the U.S. that occurred more than one year before you file your U.S. patent application, must be disclosed to the USPTO and can be a bar to patentability.)
Please destroy any draft versions of this document to prevent confusion should the draft be discovered during any future patent infringement or validity lawsuit. Keep the final version in a safe place.
If time is critical, please submit a check for half of the estimated cost when you submit your invention disclosure, so I can start work immediately.
© 2002 Robert M. Hunter PLLC