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.”
For 10 more patent questions and their answers, read the full article in our February issue.