Plotting a patent

The color is superb. The growth habit is ideal. It’s unlike the existing plants on the market. You’ve been working on this plant for years, and you’ve finally got a selection you can stand behind, the likes of which the industry has never seen. Then you ask yourself: Can I patent this?

There have been 28,191 plant patent applications filed through the United States Patent and Trademark Office (USPTO) since 1963. From those applications, 24,021 plant patents were granted. While, comparatively speaking, plant patents make up a very small portion of the overall number of patents granted in the U.S. (there were 25,986 design patents granted in 2015 alone), their importance within the horticulture industry has grown, especially with the proliferation of brands.

Recently, the breeding industry has found itself caught up in a few legal battles over patented plants. Questions of ownership and rights to the plant pervade the arguments, and litigation is imminent for some. If you’re thinking about patenting a plant you’ve developed or are working on, this is your opportunity to learn more about the process and how to protect yourself.

If you have a plant you’re interested in legally protecting, you should ask yourself the following questions to determine if you should file a plant patent application and how to proceed.

Why do I want to patent this plant?

What is it about this plant variety that makes it special? “Typically, breeders are trying to select for traits which they feel will meet some long-felt need within the industry,” says plant patent agent Sam McCoy of Perennial Patent Co. in Mt. Pleasant, S.C. “Depending on the plant, this could be improved vigor, improved disease/pest resistance, improved bloom habits, unique flowers (size, shape, color, etc.), unique growth habits, and so on. It really depends on the genus/genera a breeder is working with and whether that particular genus is considered more of a ‘retail’ plant or a ‘landscape’ plant.”

In general, McCoy says, every breeder strives to create varieties with both improved aesthetics and performance, but the former is more important for retail plants and the latter for landscape plants. However, one thing is true for both, with the number of plant patent applications growing every year, “the competition is getting stiffer, which means breeding criteria become more stringent,” says McCoy.

No matter the particular set of qualities your plant brings to the table, the main reason to patent it (besides posterity) is for financial gain.

“You’re trying to realize a return on your investment, your investment being your time, effort and energy and money in the breeding program,” McCoy says. “If you’re a smaller guy or a nurseryman that’s literally discovered a mutation in your greenhouse, you don’t have a whole lot invested in the ‘breeding.’ But you saw the potential in the mutation. You pulled it aside, you coddled that thing through those initial stages, grew it out, compared it to others on the market. And so there’s still some energy and effort that goes into that.”

How have I reproduced this plant?

If you are seeking a plant patent for your new selection, you must have discovered or invented the variety and asexually reproduced it. It cannot be a plant produced from a tuber (such as a potato) or a plant “found in an uncultivated state,” according to the USPTO. Seed-produced varieties fall under a different category of plant protection.

Does my plant qualify for a plant patent?

There are two other areas to review to determine if this plant can be patented (besides the asexual reproduction method requirement mentioned earlier): whether the plant meets certain characteristics requirements, and if the plant has been previously publicly disclosed.

First, the characteristics: your plant variety must be new, distinct, uniform and stable. In other words, it must be a new creation, different from existing plants on the market, uniform across production and stable from generation to generation. For example, regarding the terms uniform and stable, “if you’ve propagated 20 plants, then 18 of them really need to look identical,” says Cassy Bright, plant patent agent at Hortis USA in Camarillo, Calif. “Stability means if you have a variegated variety, when you propagate it, it continues to come back variegated; it doesn’t jump around with a lot of mutations.”

Additionally, fungi, bacteria and first-generation hybrids are not eligible.

Secondly, what is your plant’s public disclosure status? A public disclosure can be one of many actions, according to McCoy, including: “a sale of any kind, an offer for sale, showing it at a trade show, putting it in your catalog or on your website, [or] any disclosure where the public could essentially go out and find information on this patented plant.”

When the America Invents Act was signed into law in 2011 and fully implemented in 2013, the U.S. went from being a “first to invent” to a “first inventor to file” country, putting it in line with most of the rest of the world. Under the new system, whomever files the patent application first can become the patent owner. That means that if you publicly disclose your plant before filing, you risk losing patentability. In addition, the new system considers any public disclosure outside of the U.S. the same as one made within our borders.

“The most important thing I tell people is, don’t show it to anybody, particularly anybody from outside of your operation,” McCoy says. “Don’t disclose it, don’t show it to anyone, and then get with a practitioner. Under this ‘first inventor to file’ system, you need to file before you disclose in any way.”

Who patented this plant?

If you collaborated with another person to “invent” this plant, you can be co-inventors. However, if you plan to patent it in the U.S. and other countries, “it has to be the exact same inventorship,” says McCoy. “If it’s joint inventors in Europe, it has to be the same joint inventors here in the U.S.”

Is this plant already patented?

Just like with other, non-plant patents, breeders need to conduct some preliminary research to determine if the plant in question has already been patented. “They should look [it up] themselves on Google, they should ask around as much as they know and have access in the industry to find out,” Bright says. “[That search] is a normal part of the commercial process.”

However, just because a plant looks very similar, it’s not necessarily the same plant. If someone harvests the seed from a patented plant and grows the plant, it’s not being produced asexually and the progeny will not have the same genome as the patented parent plant, just as children have different DNA than their parents.

Where am I planning to patent this plant?

For the purposes of this article, we’re looking at the USPTO patent process. However, it’s important to understand that there are certain limitations on the time you have to extend your plant protection to other areas of the world.

“Let’s say you live in the U.S. and you file your plant patent, you will have a certain amount of time to take that intellectual property filing and apply for an international patent in another country,” says David Postolski, patent attorney at Gearhart Law in New Jersey. “For a patent, one year after you file your patent, you will have the ability to start the international patent process. If you miss that opportunity, then you lose the opportunity to file your patent in that country.”

One consideration is whether some part of the plant’s production will take place in another country.

“If you know that your plant is going to be grown in South America because it’s optimal weather, then you probably should think about filing in Argentina or Brazil or Peru [for example],” Postolski says. “If you have the ability to file in another country, we do suggest it for sure because the world is global; information is global.”

For plant protection in many other countries, breeders can file using the standardized International Union for the Protection of New Varieties of Plants system (upov.int). For other intellectual property such as trademarks and copyrights, that timeframe may be different, so it’s wise to consult a professional who is well-versed in the international laws.

My plant has patentability- now what? Seek advice from a professional.

Once you’ve decided to pursue a plant patent, you can seek assistance from a professional to make the process go smoothly. Your two main options are to consult a patent agent (such as Bright or McCoy) or a patent attorney (such as Postolski) for patent prosecution (that is, pursuing a patent).

“You have to have a scientific background, apply to take the patent bar, pass the [patent] bar, and then you can file patents for other people [as a patent agent],” says Bright.

The biggest difference between a patent agent and a patent attorney is that the latter has also gone to law school and passed the bar exam in his or her state to be able to practice law. The cost of hiring a patent attorney tends to be higher than a plant patent agent, but agents are not able to represent their client in court as an attorney can.

Start working on the application.

According to the USPTO, plant patent applications include information such as the title of the invention, cross references to related applications, the plant’s Latin name and genus, variety denomination and a detailed botanical description, among others. Of great importance, the application “must contain as full and complete a botanical description as reasonable possible of the plant and the characteristics which distinguish that plant over known, related plants.”

And of course, you must state the claim in your application.

“With a plant patent, by law you can only have one claim, and that is to the full genome of the plant described within the patent,” McCoy says.

The application cost depends on the type of plant patent and the size of your company, McCoy says. To see the current plant patent application fee schedule, visit http://bit.ly/patent-app-fee.

How long is this going to take?

From the time you submit your completed patent application, it will take an average of 18 months to be granted, says Postolski. If you also submit a utility patent for further protection of your variety and breeding, you can expect that application to take about three years to go through.

Patent granted. How do I enforce the patent? Protect your newly acquired plant patent.

“The patent office was established in the U.S. to promote commerce,” says Bright. “It’s a commercial function of the government. They give the means to enforce those intellectual property rights, but they stay out of the enforcement [aspect].” The government facilitates the plant patent process, but it’s up to you, the patent-holder, to protect your patent rights.

As a first step, you must communicate your new plant patent to the industry. If you “recognize that someone might be infringing your [plant patent], it is now your responsibility to send them a ‘demand letter’ as we call it, similar to a cease-and-desist letter for a trademark,” Postolski says.

Let them know this plant can only be propagated with your authorization, license or purchase.

“It’s the responsibility of the breeder or the breeder’s agent” to enforce the patent, McCoy says.

For even more protection against illegal propagtion, there are “watch services” where you can pay a professional company to see if people are infringing your product, growing your plant, or people are not getting the adequate permissions, says Postolski. “They can notify you and you [can] take the proper action.”

You also must communicate to licensees and other authorized growers what information is required on the plant tags/labels, including the plant patent number or PPAF and “Unauthorized propagation prohibited,” for example. This message needs to be communicated to brokers, propagators, finished plant growers and anyone else involved in the sale or production of the plant.

What can I do with my patent?

“A patent is a form of intellectual property, [which is] like real property and personal property,” Postolski says. “They’re ideas that come out of your head, á la intellect, but they’re a property in that the federal government gives you the exclusive right to exclude others from your property.” Because a patent (or trademark or copyright) is considered to be a form of property, it can be willed, leased (via a license), sold, used as collateral for a loan or even used to attract investments from venture capitalists. To some it may seem like a simple protection, a plant patent can be a resource for the breeder.

What happens to a patent after 20 years?

Once a plant patent is granted, it’s valid for 20 years and isn’t renewable. “Once it’s expired, it’s expired,” Bright says. “You can’t extend the life of your patent. … The government protects you for 20 years in a certain way in exchange for, in the future [that knowledge] going into the public domain.”

Why should I care more about patenting my plant now than before?

Obtaining a plant patent takes time and effort, but can be worthwhile in the long run. It’s no longer enough to put your name on a new plant and trust that no one else will grow it.

“Our industry has woken up and realized how important intellectual property is to a business and to an industry,” McCoy says.

“[Obtaining a] patent is ultimately a choice an entrepreneur or a business makes or for defensive, offensive or strategic reasons. But I err on the side of if you ever want the right to say that you invented something first or try to prove that someone is infringing you, this is the only game in town. This is what you have to do, like it or not,” says Postolski.

More branded programs and marketing groups are entering the green industry.

“We’re catching up with a lot of other industries as far as [branding] goes,” McCoy says. “You have a lot of purists out there that say, ‘You’re just trying to sell the sizzle, because the steak ain’t nothin’ new.’ [However,] we need something to catch the consumer’s eye who is largely uneducated and ignorant toward plants. The tide has changed, and [the idea of patented and branded plants] is a part of our industry that’s probably not going to change and go away.”

If you have further questions about plant patents or related topics, consult a plant patent agent or attorney, or a breeder’s agent.

Karen Varga is editor of sister publication Greenhouse Management. Cassie Neiden contributed to this article.