An important aspect of developing any intellectual property strategy and portfolio is deciding which method of intellectual property protection to pursue based on the advantages and disadvantages of each method. Plants may be protected through utility patents, certificates under the Plant Variety Protection Act (“PVPA”), and plant patents. Each of these methods has their own requirements with various levels of stringency for obtaining a utility patent, certificate, or plant patent, as well as different levels of protection, as will be discussed below.

Utility Patents

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

Utility patents may be used to protect anything from the method used to create the plants to the plant’s genome or even the plant itself. An owner of a utility patent may exclude others from using, making, offering to sell, 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 gained under a utility patent do not contain any exceptions from the enforcement of the patent.

In order to obtain a utility patent, the invention that is sought to be patented must be new, useful, and nonobvious. In other words, the invention cannot have already been known to the public. If it is known, a patent application covering the invention must have been applied for within one year of the first disclosure. The invention also must be useful, meaning it must provide a specific purpose. Finally, the invention cannot have been obvious, meaning that the invention cannot be obvious to a person having ordinary skill in the relevant art. The utility patent must contain a written description, disclosing and containing enough detail that a person having ordinary skill in the art may practice the invention. Furthermore, the claims of a utility patent determine what the patent owner is able to exclude others from practicing.

The term for 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 plant varieties that reproduce sexually (through seeds) and tuber propagated plants. 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 show 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 other people for more than one year before the applicant applied for a certificate under the PVPA. The variety is distinct if it is clearly distinguishable from any other variety which is publically known or a matter of common knowledge at the time the application is filed. Finally, a plant variety is uniform and stable if any variations are describable, predictable, and commercially acceptable, and the essential and distinctive 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 others from selling or marketing the protected variety, offering it or exposing it for sale, delivering it, shipping it, consigning it, exchanging it, soliciting an offer to buy it, or any other transfer of title or possession of it. The certificate also prevents someone from importing the variety into, or exporting it from, the United States. The certificate also prevents someone from sexually multiplying or propagating by a tuber, or a part of a tuber, the variety as a step in marketing the variety for growing purposes. The plant variety also may not be used in producing (as distinguished from developing or creating) a hybrid or different variety.

The protection offered by the certificate under the PVPA has two main exceptions – the crop exception and the research exception. The crop exception allows a person to save seeds from their own plants and replant them. The research exception allows for research to be conducted and a new variety to be bred using the protected plant variety, if the protected plant variety was obtained legally. Finally, the secretary of the United States Department of Agriculture may declare a compulsory license allowing the use of a protected variety for two years, for a royalty, if licensing is deemed necessary for the public interest to maintain a sufficient food supply.

Unlike the requirements for a utility patent, the description necessary to obtain a certificate under the PVPA does not have to contain enough detail that a person having ordinary skill in the relevant art will be able to practice the patented invention. Instead, the applicant must merely describe the plant variety’s distinctiveness, uniformity, and stability. The applicant must also describe the genealogy and breeding procedure of the plant variety, when 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 3,000 seeds, with at least an 85% germination rate, or deposit a viable cell culture for tuber propagated variety to a public depository.

The certificate lasts for 20 years from the date of the issuance, or 25 years from the date of issuance for trees and vines. As soon as the application is filed and the required fee paid, provisional protection attaches to the plant variety. Thus, if the seed is properly marked, the owner of the plant variety may gain protection before the issuance of a certificate.

While the PVPA does not require periodic maintenance fees, the owner of the PVP certificate has a duty to replenish the deposit of the original 3,000 or more seed sample or tissue cultures. Once the certificate expires, the public may request seed samples.

Plant Patents

A plant patent is granted to the inventor who has invented or discovered, as well as asexually reproduced a new and distinct variety of a plant with at least one distinguishing characteristic. Algae and macro-fungi are considered plants, while bacteria are not. The plant’s characteristics must be able to be reproduced by asexual reproduction, and cannot be otherwise made or manufactured. A protectable plant includes cultivated sports, mutants, hybrids, or transformed plants. The cultivated sport, the part of the plant that displays morphological differences from the rest of the plant, or mutant may be spontaneous or induced. While natural mutants may be protected under a plant patent, they must have been discovered in a cultivated area. Hybrids may be natural, from a breeding program or somatic.

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

A plant patent cannot be granted for a tuber propagated plant (e.g., a potato) or a plant found in an uncultivated state. Additionally, a plant variety must be new and distinct. The variety cannot have been previously patented, described in a United States patent or a United States patent application, in public use, on sale, or otherwise available to the public more than one year prior to the filing date of the plant patent application. The variety must also be clearly distinguishable from existing varieties. The plant cannot be obvious to one having ordinary skill in the art as of the filing date of 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 mutant of the patented plant is unlikely to be covered by the plant patent because the plant derived from the sport or mutant likely does not have the same genotype as the original patented plant.

The owner of a plant patent may exclude others from asexually reproducing, selling, offering for sale, or using the patented plant or any of its parts in the United States, as well as importing them into the United States.

In order to obtain a plant patent, the description must contain as full and as complete a botanical description as reasonably possible of the plant and the characteristics which distinguish the plant from other known plants. The applicant must submit a photograph of the plant that the he or she is seeking to patent. The plant patent is limited to one claim and must be to the plant as a whole. The claim may reference one or more of the specific characteristics of the plant, but cannot claim the parts or products of the plant.

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

Conclusion

While utility patents, certificates under the PVPA, and plant patents offer different levels of protection as well as various levels of difficulties in obtaining each method of protection, all of these methods of protecting intellectual property can be helpful in protecting the time and effort invested into 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 may exclude others from doing. The owner of the intellectual property can then also determine whether he or she would like to offer a license for some or all of those intellectual property rights. Another method of protecting intellectual property is through contractual restrictions, where the owner of the intellectual property can also determine under what circumstances and limitations he or she would like to offer the intellectual property to the public. The many methods of protecting plant varieties through intellectual property each have their own advantages and disadvantages, which are important considerations when developing any intellectual property strategy and portfolio. For further questions regarding intellectual property protections, please contact Marriam Lin or any other member of Husch Blackwell’s Intellectual Property team.