Plants can be patented under the United States Patent Act. See 35 U.S.C. §§ 161-164. Like a utility patent, a plant patent will protect the patented plant for 20 years from the date of filing the application. The patent gives the owner the right to exclude others from asexually reproducing the plant, and from using, offering for sale, or selling the plant so reproduced throughout the United States.

There are a number of rules specific to plant patents. To be patentable, the object of the patent application must have these characteristics:

• Be a living plant organism which expresses a set of characteristics determined by its single, genetic makeup or genotype
• Cannot be a bacteria, but can be algae or macro-fungi
• Cannot be a tuber food part like a potato
• Cannot have been found in the wild, but can have been a new seedling discovered in a cultivated area
• Must be capable of duplication through asexual reproduction
• Cannot be otherwise be “made” or “manufactured”

As with other types of patents, a plant patent application must satisfy the other requirements of the Patent Act. Thus, the plant must be novel. That is, the plant be shown to differ from known, related plants by at least one distinguishing characteristic, which is more than a difference caused by growing conditions or fertility levels. Further, oddly enough, it must also be shown that the plant would not have been obvious to one having ordinary skill in the art. The plant patent application also contain a written description, contain a single claim specification, contain a full and complete a disclosure of the plant and its characteristics and describe in what manner the plant has been asexually reproduced. Examples of acceptable methods of asexual reproduction include:

• Rootings and cuttings
• Grafting and budding
• Bulbs
• Division
• Rhizomes
• Runners
• Corms
• Tissue culture

A good case example illustrating the legal principles comes from the case of In re Beineke, 690 F. 3d 1344 (Court of Appeals, Federal Circuit 2012). In that case, the patent applicant — Walter Beineke — discovered two white oak trees in the front yard of a neighbor’s home that appeared to display superior genetic traits as compared to other white oak trees, such as excellent timber quality and strong central stem tendency. However, Beineke’s patent applications were rejected. Beineke was able to satisfy the requirements that his application identified plants and identified plants that were unique. He was also able to show that he was able to reproduce the trees through asexual reproduction. However, essentially, his trees were found in the wild. Being mature trees, they were too old to be deemed “seedlings” and the area where they were found had not been cultivated in decades. In general, it is not possible to patent things that are found in nature and/or things which come into existence without human creative involvement. The court held that Congress allowed newly found seedlings in cultivated areas to be patentable because it could be assumed that, by cultivation of the land, human endeavor contributed to the creation of a new unique type of plant. Beineke did not satisfy this standard and, thus, his patent application was properly denied. For more information or if you have an invention or design that you want to patent, contact the patent lawyers at Revision Legal at 231-714-0100.

Plant Patents vs. Utility Patents vs. Plant Variety Protection

Inventors of new plant varieties have three distinct forms of legal protection available in the United States. Understanding which form of protection is appropriate—and sometimes using multiple forms in combination—is critical to a comprehensive IP strategy for plant innovation. Plant patents under 35 U.S.C. §§ 161-164 protect newly developed asexually reproduced plant varieties. Utility patents under 35 U.S.C. § 101 can protect plants produced through genetic engineering, plant transformation methods, and individual plant genes, as well as methods of using plant-derived compounds in food, pharmaceutical, or industrial applications. Plant Variety Protection (PVP) certificates, issued under the Plant Variety Protection Act (PVPA), 7 U.S.C. § 2321 et seq., by the USDA protect sexually reproduced (seed-propagated) and tuber-propagated plant varieties.

The choice among these forms of protection depends on the nature of the innovation and the reproduction method. For ornamental plants propagated by cuttings—roses, chrysanthemums, fruit trees—plant patents are typically the primary protection vehicle. For genetically engineered crops like herbicide-resistant soybeans or pest-resistant corn, utility patents are the standard choice because they can claim the specific genes introduced, the transformation method, and the plant itself. For conventionally bred seed varieties, PVP certificates provide protection against unauthorized sale of seed from one generation of the protected variety.

The Asexual Reproduction Requirement and Its Legal Significance

The asexual reproduction requirement in plant patent law, 35 U.S.C. § 163, serves a dual purpose: it establishes that the claimed plant variety is stable and can be reproduced predictably, and it limits plant patents to varieties that reproduce through non-seed means. The requirement reflects Congress’s intent that plant patents protect human-developed cultivars rather than naturally reproducing genetic variation.

The legal significance of the asexual reproduction requirement extends to infringement. Under 35 U.S.C. § 163, a plant patent grants the right to exclude others from ‘asexually reproducing the plant, and from using, offering for sale, or selling the plant so reproduced, or any of its parts, throughout the United States.’ This means that the plant patent protects only against asexually reproduced copies of the patented plant. A person who independently develops a sexually reproduced variety with similar characteristics does not infringe a plant patent, even if the resulting plant is visually similar to the patented variety.

Drafting the Plant Patent Application: Unique Requirements

Plant patent applications have several requirements that differ from utility patent applications. Under 37 C.F.R. § 1.163, the specification for a plant patent application must contain a detailed description of the plant that enables a person with ordinary skill in plant breeding to identify the plant and reproduce it through asexual reproduction. The description should address the plant’s botanical classification, vegetative characteristics, growing conditions, distinctive characteristics compared to related varieties, and the complete history of the plant including how it was discovered and asexually reproduced.

A plant patent application may contain only a single claim—the statute does not permit multiple claims as in utility patents. The single claim must particularly point out and distinctly claim the plant variety. Photographs or color drawings are strongly recommended and often essential to accurately convey the plant’s distinctive characteristics, particularly for ornamental plants where visual characteristics are the primary distinguishing feature.

Plant Patent Infringement: Recent Cases and Enforcement Trends

Plant patent infringement requires the unauthorized asexual reproduction, use, offer for sale, or sale of the patented plant. Enforcement of plant patents has become increasingly important in the horticultural industry, where new ornamental plant varieties command significant price premiums. The DNA fingerprinting technology now available for plants has made it substantially easier to detect unauthorized propagation, and courts have awarded significant damages in plant patent cases.

In Imazio Nursery v. Dania Greenhouses, 69 F.3d 1560 (Fed. Cir. 1995), the Federal Circuit established that a plant patent is infringed when the accused infringer produces plants that are ‘the same variety’ as the patented plant—a standard that is met when the accused plant is identical to or indistinguishable from the patented plant in all commercially significant characteristics. Plant breeders seeking to develop non-infringing alternatives must achieve sufficient genetic differentiation to avoid this standard.

Getting Started: The Patent Application Process for Plant Innovators

If you have developed a new plant variety through asexual reproduction, the first step is to document your development process thoroughly—how and where the variety was discovered or created, the methods used to asexually reproduce it, and the characteristics that distinguish it from known, related varieties. This documentation will form the foundation of your patent application and may also be critical to establishing priority in the event of a later dispute with a competing applicant.

The patent attorneys at Revision Legal can evaluate whether your plant variety qualifies for patent protection, advise on the best form of IP protection for your innovation, prepare and prosecute the patent application, and enforce your rights against infringers. Contact us today to discuss your plant patent needs.