Growth Through Intellectual Property – Plant Protection Through Utility Patents, Certificates and Patents on Plants | Husch Blackwell LLP

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An important aspect of developing an intellectual property strategy and portfolio is deciding which method of intellectual property protection to apply based on the pros and cons of each method. Plants can be protected by utility patents, certificates under the Plant Variety Protection Act (“PVPA”), and plant patents. Each of these methods has its own requirements with different levels of stringency for obtaining a utility patent, plant certificate or patent, as well as different levels of protection, as we will see below. below.

Utility patents

Utility patents can offer one of the most comprehensive levels of protection while still being broadly applicable to both the plant and its parts. Due to the high level of protection offered, applicants must also meet strict requirements to obtain a utility patent.

Utility patents can be used to protect anything from the method used to create the plants to the plant genome or even the plant itself. The owner of a utility patent may prevent others from using, making, offering for sale, selling or importing the patented invention into the United States. The owner of a utility patent may also prevent others from using the patented invention in breeding programs. The rights acquired by virtue of a utility patent do not contain any exception to the application of the patent.

To obtain a utility patent, the invention sought to be patented must be new, useful, and non-obvious. In other words, the invention cannot have already been known to the public. If known, a patent application covering the invention must have been filed within one year of the first disclosure. The invention must also be useful, that is to say, it must have a specific purpose. Finally, the invention may not have been obvious, which means that the invention may not be obvious to a person of ordinary skill in the relevant art. The utility patent must contain a written description, disclosing and containing sufficient detail so that a person of ordinary skill in the art can practice the invention. In addition, the claims of a utility patent determine what the patentee is able to exclude others from the practice.

The term of a utility patent is 20 years from the filing date of the application. However, in order to maintain the patent, the patent owner must periodically pay maintenance fees to the United States Patent and Trademark Office.

Certificates under the Plant Variety Protection Act

Certificates under the PVPA are only available to protect varieties of plants that reproduce sexually (by seed) and plants propagated by tubers. Fungi and bacteria are not eligible for protection under the PVPA.

Unlike the detailed disclosure requirements necessary to obtain a utility patent, an applicant must demonstrate that the plant variety is new, distinct, uniform and stable. A plant variety is new if it has not been sold or is otherwise available to others for more than a year before the applicant applies for a certificate under the PVPA. The variety is distinct if it is clearly distinguishable from any other variety known to the public or well known at the time of filing the application. Finally, a plant variety is uniform and stable if variations are descriptible, predictable and commercially acceptable, and the essential and distinguishing characteristics of the variety remain unchanged, with a reasonable degree of reliability.

A certificate under the PVPA covers a single plant variety and its essentially derived varieties. It grants exclusive rights to prevent third parties from selling or marketing the protected variety, offering it or exhibiting it for sale, delivering it, shipping it, consigning it, exchanging it, solicit an offer to purchase or any other transfer of title or possession. of it. The certificate also prevents someone from importing the variety into the United States or exporting it from. The certificate also prevents someone from multiplying or sexually propagating through a tuber, or part of a tuber, the variety as a step in marketing the variety for cultivation. The plant variety also cannot be used to produce (as opposed to developing or creating) a hybrid or different variety.

There are two main exceptions to the protection afforded by the certificate under the PVPA: the crop exception and the research exception. The crop exception allows a person to save the seeds of their own plants and replant them. The research exception allows research and selection of a new variety using the protected plant variety, if the protected plant variety has been obtained legally. Finally, the Secretary of the United States Department of Agriculture may declare a license compulsory permitting the use of a protected variety for two years, for a fee, if a license is deemed necessary in the public interest to maintain a sufficient food supply.

Unlike the requirements of a utility patent, the description necessary to obtain a certificate under the PVPA need not contain sufficient detail for a person of ordinary skill in the relevant art to practice the patented invention. Instead, the applicant should simply describe the distinctiveness, uniformity and stability of the plant variety. The applicant should also describe the genealogy and selection procedure of the plant variety, if known. In addition to the description, an applicant may also be required to submit photographs, drawings or plant specimens. The applicant must submit at least 3000 seeds, with a germination rate of at least 85%, or deposit a viable cell culture for a tuber multiplied variety to a public depository.

The certificate has a duration of 20 years from the date of issue, or 25 years from the date of issue for trees and vines. As soon as the application is filed and the required tax has been paid, provisional protection is attached to the plant variety. Thus, if the seed is correctly marked, the owner of the plant variety can obtain protection before the issuance of a certificate.

Although the PVPA does not require a periodic maintenance fee, the owner of the PVP certificate has a duty to replenish the deposit from the original sample of 3000 seeds or tissue cultures. Once the certificate expires, the public can request seed samples.

Plant patents

A plant patent is granted to the inventor who invented or discovered, as well as asexual reproduction of a new distinct variety of a plant with at least one distinguishing characteristic. Algae and macrofungi are considered plants, unlike bacteria. The characteristics of the plant must be capable of being reproduced by asexual reproduction and cannot be made or fabricated otherwise. A protectable plant includes cultivated sport plants, mutants, hybrids or transformed plants. Cultivated sport, the part of the plant that has morphological differences from the rest of the plant, or the mutant can be spontaneous or induced. Although natural mutants can be protected by a plant patent, they must have been discovered in a cultivated area. Hybrids can be natural, from a breeding program, or somatic.

A plant is considered to be reproduced asexually if it can be reproduced by: (1) root cuttings; (2) apomictic seeds; (3) division; (4) superposition; (5) runners; (6) tissue culture; (7) grafting and budding; (8) light bulbs; (9) slips; (10) rhizomes; (11) bulbs; and (12) nucellar embryos.

A plant patent cannot be granted for a plant propagated by tuber (eg, a potato) or a plant found in an uncultivated state. In addition, a plant variety must be new and distinct. The variety cannot have been previously patented, described in a US patent or US patent application, in public use, for sale, or otherwise available to the public more than one year before the filing date of the plant patent application. The variety should also be clearly distinguished from existing varieties. The plant may not be obvious to those skilled in the art at the time of filing the plant patent application. However, unlike the requirement for a certificate under the PVPA, the variety does not have to be uniform or stable. The plant patent is only granted for a single plant or genome. Therefore, a plant derived from a sport or a mutant of the patented plant is unlikely to be covered by the plant patent because the plant derived from the sport or the mutant probably does not have the same genotype as the plant. original patented plant.

The owner of a plant patent may exclude others from the asexual reproduction, sale, offer for sale or use of the patented plant or any part of it in the United States, as well as their importation into the United States.

In order to obtain a plant patent, the description must contain as complete and as complete a botanical description as reasonably possible of the plant and of the characteristics which distinguish the plant from other known plants. The applicant must submit a photograph of the plant they wish to patent. The plant patent is limited to a single claim and must relate to the plant as a whole. The claim may refer to one or more of the specific characteristics of the plant, but cannot claim parts or derivatives of the plant.

The term of protection for a plant patent is 20 years from the date of filing of the application. The owner of the plant patent must also pay periodic maintenance fees to maintain his plant patent. Once the plant patent expires, the patented plant becomes available to the public.

Conclusion

While utility patents, PVPA certificates, and plant patents provide different levels of protection as well as varying levels of difficulty in obtaining each method of protection, all of these methods of intellectual property protection can be helpful. to protect the time and effort invested in creating the plant. The type of intellectual property protection obtained can help determine the intellectual property rights of the owner of the plant variety and what the owner can prevent others from doing. The owner of the intellectual property can then also determine whether he wishes to offer a license for all or part of these intellectual property rights. Another method of protecting intellectual property is through the use of contractual restrictions, where the owner of the intellectual property can also determine under what circumstances and within what limits he wishes to offer the intellectual property to the public. The many methods of IP protection of plant varieties each have their own advantages and disadvantages, which are important considerations when developing an IP strategy and portfolio.


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