Chapter §24.03 Requirements for Plant Patent Protection
| Jurisdiction | United States |
§24.03 Requirements for Plant Patent Protection
[A] Governing Statutes
The requirements for obtaining and enforcing U.S. plant patents are presently governed by 35 U.S.C. §§161–164, which provide:
§161. Patents for plants
Whoever invents or discovers and asexually reproduces any distinct and new variety of plant, including cultivated sports, mutants, hybrids, and newly found seedlings, other than a tuber propagated plant or a plant found in an uncultivated state, may obtain a patent therefor, subject to the conditions and requirements of this title.
The provisions of this title relating to patents for inventions shall apply to patents for plants, except as otherwise provided.
§162. Description, claim
No plant patent shall be declared invalid for noncompliance with section 112 if the description is as complete as is reasonably possible.
The claim in the specification shall be in formal terms to the plant shown and described. 36
§163. Grant
In the case of a plant patent, the grant shall include the right to exclude others from asexually reproducing the plant, and from using, offering for sale, or selling the plant so reproduced, or any of its parts, throughout the United States, or from importing the plant so reproduced, or any parts thereof, into the United States.
§164. Assistance of Department of Agriculture
The President may by Executive order direct the Secretary of Agriculture, in accordance with the requests of the Director [of the Patent and Trademark Office], for the purpose of carrying into effect the provisions of this title with respect to plants (1) to furnish available information of the Department of Agriculture, (2) to conduct through the appropriate bureau or division of the Department research upon special problems, or (3) to detail to the Director officers and employees of the Department. 37
The following subsections examine the key criteria for obtaining plant patents under 35 U.S.C. §161.38
[B] Asexual Reproduction
The cornerstone requirement for obtaining a plant patent is to "asexually" reproduce a new and distinct plant.39 This requires growing a genetically identical copy of a parent plant through acts such as budding, grafting, or cutting.40 The Court of Customs and Patent Appeals (CCPA) explained that "[i]n 'asexual propagation,' . . . the plant is propagated by divisions or cuttings to form clones, each of which is identical to the parent plant and to all other cuttings or clones taken from the parent."41
Asexual reproduction ensures that the progeny produced is identical or "true to type"—essentially a clone of the parent plant. "[A]sexual reproduction confirms the existence of a new variety by separating variations resulting from fluctuations in environmental conditions from true plant variations."42
In contrast, growing plants from seed is considered "sexual" reproduction and is not covered by plant patent protection under §161. However, a sui generis form of IP protection for sexually reproduced plant varieties, as well as tuber-propagated plants (such as potatoes), is available in the United States. The Plant Variety Protection Act (PVPA) was further described supra.43
[C] Variety
Section 161 of 35 U.S.C. does not define "variety," but case law interprets the word's meaning in the context of the statute and its legislative history.44 The Federal Circuit in Imazio Nursery, Inc. v. Dania Greenhouses45 held that " 'variety as used in section 161 encompasses a single plant, the plant shown and described in the specification."46
In so holding the appellate court rejected plant patentee Imazio's proposed broad definition of "variety" in its "technical, taxonomic sense," that is, "all plants having the same essential and distinctive characteristics," not just "clones of a single plant."47 Rather, the asexual reproduction requirement [described supra48] directed and limited the meaning "variety." Because of the asexual reproduction requirement, the Imazio Nursery court held, plant patents cover only "a single plant and its asexually reproduced progeny."49 Thus, the definition of "variety" in §161 "cannot be read as affording plant protection to a range of plants" as the patentee had argued.50
The Imazio Nursery court also supported its narrow definition of "variety" as encompassing only a single plant by contrasting the use of that word in the Plant Variety Protection Act of 1970 (PVPA).51 The PVPA defines "variety" as a grouping of plants that have the same essential and distinctive characteristics.52 Patentee Imazio argued that principles of statutory construction required that the meaning of "variety" as used in the PVPA, a statute that in its view had "the same general purpose" as the Plant Patent Act of 1930, be equated to the meaning of "variety" as used (but not defined) in 35 U.S.C. §161.53
The Federal Circuit in Imazio Nursery acknowledged this constructional presumption but found it inapplicable to the case at bar because "the two statutes differ significantly in their purposes."54 The distinction in statutory purpose centered on the results of asexual reproduction, the "cornerstone" requirement of the Plant Patent Act of 1930,55 versus sexual reproduction, as required by the PVPA. Plants produced by asexual reproduction are genetically identical to their parents, the Federal Circuit explained, whereas sexual reproduction (such as by seed) combines the characteristics of the parent plant but produces a different plant.56
Hence, the scope of protection provided by the Plant Patent Act of 1930 and by the PVPA is fundamentally different. In the Imazio Nursery court's view, the term "variety" in both statutes could not be read "divorced from the very different circumstances in which that term is used."57 The Federal Circuit accordingly rejected Imazio's contention that the meaning of "variety" in the two statutes had to be interpreted identically.
[D] Distinct and New
Section 161 of 35 U.S.C. also requires that to be protected by plant patent, an asexually reproduced plant variety must be "distinct and new." Again, the statute does not define these terms. However, the legislative history of the 1930 Plant Patent Act provides an instructive explanation of the "distinct" requirement in terms of the many potential characteristics of a plant that may distinguish it from other plants:
[i]n order for the new variety to be distinct it must have characteristics clearly distinguishable from those of existing varieties. . . . The characteristics that may distinguish a new variety would include, among others, those of habit; immunity from disease; resistance to cold, drought, heat, wind, or soil conditions; color of flower, leaf, fruit, or stems; flavor; productivity, including ever-bearing qualities in case of fruits; storage qualities; perfume; form; and ease of asexual reproduction. Within any one of the above or other classes of characteristics the differences which would suffice to make the variety a distinct variety, will necessarily be differences of degree. 58
In Application of Greer,59 the CCPA considered whether a claim to a variety of Bermuda grass found growing in a bed of, and allegedly distinct from, a variety of Bermuda grass known as Zimmerly Select, was entitled to plant patent protection. Applicant Greer's claim, which stated the assertedly distinct characteristics of his variety, recited:
1. A new and distinct variety of BERMUDA GRASS PLANT, substantially as shown and described, characterized particularly by its outstanding reproductive properties, its large, glossy rhizomes, its high level of resistance to common Bermuda grass diseases and the large percentage of above ground stolons which remain green in freezing weather. 60
The remainder of Greer's application included various observations about each of the characteristics recited in his claim. For example, in support of the assertion that Greer's claimed plant produced "large, glossy rhizomes," the application stated that "some are almost as large in diameter as a lead pencil." Moreover, they "penetrated the soil from one inch to two and one-half inches deeper than Coastal Bermuda [another variety of Bermuda grass] rhizomes grown under identical conditions."
The USPTO rejected Greer's application under 35 U.S.C. §112 as "unsupported by a clear and complete disclosure with respect to the allegedly distinguishing characteristics of (1) faster reproduction, (2) frost and disease resistance, (3) rhizome penetration, (4) rhizome diameter and (5) rhizome color in freezing weather." With respect to assertion (3) that rhizomes of the claimed grass penetrated to a greater depth than those of Coastal Bermuda grass, the agency found that "[t]his comparison should [have] include[d] Zimmerly Select as this was the original source of the claimed grass."61 It concluded that Greer's "failure to adequately differentiate the claimed grass from other known varieties of Bermuda grass must result in the denial of a patent."
The CCPA in Greer affirmed the USPTO's denial of a plant patent. Although the Plant Patent Act of 1930 admittedly relaxed the written description requirement of §112 for plants,62 Congress in so doing did not intend the plant patent statutes to "allow an applicant to allege characteristics which might be capable of distinguishing one variety of plant from another without sufficient disclosure to establish that these characteristics are indeed present in the claimed plant and absent in the varieties to which it is most closely related."63 The legislative history of the Plant Patent Act "ma[de] it clear that the applicant bears the burden of clearly and precisely describing those characteristics which define the new variety."64
In the case at bar, however, applicant Greer had failed to carry that burden:
In the instant case we do not doubt that Bermuda grass having different reproductive properties, disease resistance, etc., when compared to the same properties of known varieties, would be a distinct...
To continue reading
Request your trial