1601 Introduction: The Act, Scope, Type of Plants Covered [R-01.2024]

The right to a plant patent stems from:

Asexually propagated plants are those that are reproduced by means other than from seeds, such as by the rooting of cuttings, by layering, budding, grafting, inarching, apomictic seeds, bulbs, division, slips, rhizomes, runners, corms, tissue culture, nucellar embryos, etc. Plants capable of sexual reproduction are not excluded from consideration if they have also been asexually reproduced.

With reference to tuber propagated plants, for which a plant patent cannot be obtained, the term “tuber” is used in its narrow horticultural sense as meaning a short, thickened portion of an underground branch. Such plants covered by the term “tuber propagated” include the Irish potato and the Jerusalem artichoke. This exception is made because this group alone, among asexually reproduced plants, is propagated by the same part of the plant that is sold as food. S. Rep. No. 71-315, at 5 (1930).

The term “plant” has been interpreted to mean “plant” in the ordinary and accepted sense and not in the strict scientific sense and thus excludes bacteria. In re Arzberger, 112 F. 2d 834, 46 USPQ 32 (CCPA 1940). The term “plant” thus does not include asexual propagating material, per se.Ex parte Hibberd, 227 USPQ 443, 447 (Bd. Pat. App. & Int. 1985). A “plant” in its ordinary meaning includes: a living plant organism which expresses a set of characteristics determined by its single, genetic makeup or genotype, which can be duplicated through asexual reproduction, but cannot otherwise be "made" or "manufactured." This ordinary meaning includes cultivated sports, mutants, hybrids, or transformed plants, where sports or mutants may be spontaneous or induced, and hybrids may be natural, from a planned breeding program, or somatic in source. While natural plant mutants might have naturally occurred, they must have been discovered in a cultivated area. Algae and macro-fungi are also regarded as plants.

Invention for purposes of a plant patent is a two-step process:

• 1) Discovery involves the identification of a novel plant in any cultivated area, involves the identification or recognition of an off­type plant in a monoculture of a known variety or the identification of a desirable mutant which was either spontaneous or induced, or results from the identification or recognition of an outstanding individual within the progeny of a cross made in a planned breeding program .
• 2) Asexual reproduction, including observation of the resulting propagules or clones for a sufficient amount of time to have concluded that such specimens are identical to the parent plant in all characteristics, which tests the stability and uniformity of the claimed plant to assure that the plant's unique characteristics are not due to disease, infection, or exposure to agents which cause a change in the plant's appearance which is transitory and not due to a change in the genotype of the plant.

Each of the above steps must be satisfied before filing a plant application. Filing of an application before the second step of invention has been completed will result in rejection of the claim as being premature and nonstatutory.

35 U.S.C. 161 originated as an amendment to the pre-existing patent statute with the Plant Patent Act of 1930. As enacted, the “invents or discovers” requirement limited patent protection to plants “that were created as a result of plant breeding or other agricultural and horticultural efforts and that were created by the inventor.” In re Beineke, 690 F.3d 1344, 1352, 103 USPQ2d 1872, 1877 (Fed. Cir. 2012). The plant patent provisions were separated from the utility patent provisions in the Patent Act of 1952 to create 35 U.S.C. 161. Id. at 1348 n.2, 103 USPQ2d 1875 n.2. 35 U.S.C. 161 was amended in 1954 to extend protection to “newly found seedlings,” provided they were found in a cultivated state, but did not otherwise alter the scope of plant patent protection. Id. at 1352-53, 103 USPQ2d at 1878-79. In Beineke, the Federal Circuit held that two century-old oak trees found on the lawn of a home were ineligible for patent protection under 35 U.S.C. 161 because they were not created from inception by human activity and created by the inventor as required by the 1930 Act, nor were they “newly found seedlings” under the 1954 amendment. Id. at 1348, 1352, 103 USPQ2d at 1875, 1879.

In reviewing the history of the Plant Patent Act, the Supreme Court explained:

Prior to 1930, two factors were thought to remove plants from patent protection. The first was the belief that plants, even those artificially bred, were products of nature for purposes of the patent law…. The second obstacle to patent protection for plants was the fact that plants were thought not amenable to the “written description” requirement of the patent law. See 35 U.S.C. § 112. … In enacting the Plant Patent Act, Congress addressed both of these concerns. It explained at length its belief that the work of the plant breeder “in aid of nature” was patentable invention. S. Rep. No. 315, 71st Cong., 2d Sess., 6-8 (1930); H.R. Rep. No. 1129, 71st Cong., 2d Sess., 7-9 (1930). And it relaxed the written description requirement in favor of “a description … as complete as is reasonably possible.” 35 U.S.C. § 162.

Diamond v. Chakrabarty, 447 U.S. 303, 311-312, 206 USPQ 193 (1980).

An asexually reproduced plant may alternatively be protected under 35 U.S.C. 101, provided the written description requirement can be satisfied. See 35 U.S.C. 112. In J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc., the Supreme Court held that patentable subject matter under 35 U.S.C. 101 includes newly developed plants, even though plant protection is also available under the Plant Patent Act (35 U.S.C. 161-164) and the Plant Variety Protection Act (7 U.S.C. 2321 et. seq.). J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’l, Inc., 534 U.S. 124, 143-46, 122 S.Ct. 593, 605-06, 60 USPQ2d 1865, 1874 (2001) (The scope of coverage of 35 U.S.C. 101 is not limited by the Plant Patent Act or the Plant Variety Protection Act; each statute has different requirements and protections). An application filed under 35 U.S.C. 101 may claim the same asexually reproduced plant that is claimed under 35 U.S.C. 161, as well as plant materials and processes involving plant materials. See MPEP § 2105.

The filing of a terminal disclaimer may be used in appropriate situations to overcome an obviousness-type double patenting rejection based on claims to the asexually reproduced plant and/or fruit and propagating material thereof in an application under 35 U.S.C. 101 and the claim to the same asexually reproduced plant in an application under 35 U.S.C. 161.

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.

A plant patent is regarded as limited to one plant, or genome. A plant derived from a sport or a mutant is unlikely to have the same genome as the original plant, and thus would not be covered by the plant patent to the original plant. Such plant derived from a sport or a mutant may itself be protected under a separate plant patent, subject to meeting the requirements of patentability.

A plant patent issuing from an application filed after June 7, 1995 has a term which expires 20 years after the filing date of the application, or any earlier filing date claimed under 35 U.S.C. 120, 121 or 365(c). See MPEP § 2701. Plant patent applications are examined with respect to the same statutory provisions as other national applications (see MPEP § 1608) and will be published pursuant to 35 U.S.C. 122(b). See MPEP § 324 (for applications filed before September 16, 2012), 325 (for applications filed on or after September 16, 2012), or 402 for information on legal representation in patent applications.

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