Plant Patents (MPEP 1600)

Plant patents aren’t test frequently on the Prometric Patent Bar Exam. Know the following highlights:

• Must be asexually reproduced
• Bacteria is not a plant
• Only one claim allowed
• Two color (if necessary) copies of drawings
• Claim the plant, not the fruit of the plant
• No advertising allowed
• No maintenance fees

1600: Plant Patents:

1. What types of Plants can be patented?
   1. Asexually propogating plants are the only kind that may be patented. If a plant reproduces exclusively via pollination/seeding it is not covered (Exception: Some plants can reproduce both sexually & asexually, they are allowed for plant patents).
   2. Tubers (like Potatoes, Jerusalem Artichokes) are not allowed to be patented. “Tuber” is used in its horticultural sense.
   3. “Plant” is not used in the strict scientific sense so single-cell organisms are not considered ‘plants’ even if they reproduce asexually.
   4. Plants: It is possible to get a utility patent (35 U.S.C. 101) on a plant instead of the plant patent (35 U.S.C. 161) so plant patents are not exclusive to utility patents (although you have to choose one or the other).
2. Term: The term for plant patents is the same as for utility patents: 20 years from the effective filing date.
3. Elements of the patent:
   1. Description: The description should have a complete description of the plant, and fully describe the characteristics that make it different from other species of plant or antecedents.
      1. The terms used should be scientific botanical terms, not general terms seen in nursery guides.
      2. The genus and species name of the plant (in Latin, not genus & species as in generic claims) should be part of the ADS & description (see 37 CFR 1.163)
      3. As long as the plant is mentioned, if the description of the plant turns out to be deficient, the applicant is allowed to amend or even completely replace the description to make it sufficient and this is not considered new matter. (It would only be considered new matter if the description were actually for a different plant than the one originally specified).
   2. Drawings: (37 CFR 1.165, 1.84):
      1. The drawings must be complete and disclose all distinctive characteristics of the plant being claimed (if those characteristics are capable of being visualized).
      2. Color: For plant apps, color drawings are allowed with more freedom (no need to file 1.84 petitions). The applicant must provide 2 color copies of any color drawings or photos of the plant. These copies are not required at the filing date (only one original is needed to get a filing date) but examination will not begin until the copies are given to the USPTO. There is no 37 CFR 1.165 requirement for a B&W photocopy of photos on plant applications.
   3. Specimens: The applicant may be required to produce specimens that are at the correct level of development for the office to examine.