Chapter   1600  Plant Patents
---SECTION---1601 Introduction:  The Act, Scope, Type of Plants Covered

The right to a plant patent stems from:

35 U.S.C. 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.

Asexually propagated plants are those that are reproduced by means other
than from seeds, such as by the rooting of cuttings, by layering,
budding, grafting, inarching, etc. Plants capable of sexual reproduction
are not excluded from consideration if they have also been asexually
reproduced.

With reference to tuber propagated plants, for which a plant patent
cannot be obtained, the term "tuber" is used in its narrow horticultural
sense as meaning a short, thickened portion of an underground branch.
Such plants covered by the term "tuber propagated" are the Irish potato
and the Jerusalem artichoke. This exception is made because this group
alone, among asexually reproduced plants, is propagated by the same part
of the plant that is sold as food.

The term "plant" has been interpreted to mean "plant"  in the ordinary
and accepted sense and not in the strict scientific sense and thus
excludes bacteria.  In re Arzberger, 112 F. 2d 834, 46 USPQ 32 (CCPA
1940). The term "plant" thus does not include asexual propagating
material, per se. Ex parte Hibberd, 227 USPQ 443, 447 (Bd. Pat. App. &
Int. 1985).

An asexually reproduced plant may also be protected under  35 U.S.C.
101, as the Plant Patent Act (35 U.S.C. 161) is not an exclusive form of
protection which conflicts with the granting of utility patents to
plants. Ex parte Hibberd, 227 USPQ 443 (Bd. Pat. App. & Int. 1985). 
Inventions claimed under  35 U.S.C. 101 may include the same asexually
reproduced plant which is claimed under  35 U.S.C. 161, as well as plant
materials and processes involving plant materials. The filing of a
terminal disclaimer may be used in appropriate situations to overcome an
obviousness-type double patenting rejection based on claims to the
asexually reproduced plant and/or fruit and propagating material thereof
in an application under  35 U.S.C. 101 and the claim to the same
asexually reproduced plant in an application under  35 U.S.C. 161.

35 U.S.C. 163 Grant.

In the case of a plant patent the grant shall be of the right to exclude
others from asexually reproducing the plant or selling or using the
plant so reproduced.

---SECTION---1602 Rules Applicable

37 CFR 1.161 Rules applicable.

The rules relating to applications for patent for other inventions or
discoveries are also applicable to applications for patents for plants
except as otherwise provided.

---SECTION---1603 Elements of a Plant Application

An application for a plant patent consists of the same parts as other
applications and must be filed in duplicate (37 CFR 1.163(b)), but only
one need be signed and executed; the second copy may be a legible copy
of the original. Two copies of color drawings must be submitted.  37 CFR
1.165(b). The reason for thus providing an original and duplicate file
is that the duplicate file is utilized for submission to the Department
of Agriculture for a report on the plant variety, the original file
being retained in the Patent and Trademark Office at all times.

Applications for a plant patent which fail to include two copies of the
specification and two copies of the drawing when in color will be
accepted for filing only.  The Office of Initial Patent Examination
(OIPE) will notify the applicant immediately of this deficiency and
require the same to be rectified within two months. Failure to do so
will result in abandonment of the application.

---SECTION---1604 Applicant, Oath

37 CFR 1.162 Applicant, oath or declaration.

The applicant for a plant patent must be the person who has invented or
discovered and asexually reproduced the new and distinct variety of
plant for which a patent is sought (or as provided in Section Section 
1.42, 1.43 and 1.47). The oath or declaration required of the applicant,
in addition to the averments required by Section  1.63, must state that
he or she has asexually reproduced the plant. Where the plant is a newly
found plant, the oath or declaration must also state that it was found
in a cultivated area.

A Plant Patent Application (35 U.S.C. 161) Declaration, Form PTO/SB/03,
may be used to submit a declaration.

In an application for a plant patent, there can be joint inventors. See
Ex parte Kluis, 70 USPQ 165 (Bd. App. 1945).

Form PTO/SB/03. Plant Patent Application[GRAPHIC]

[GRAPHIC]

---SECTION---1605 Specification and Claim

35 U.S.C. 162 Description, claim.

No plant patent shall be declared invalid for noncompliance with section
112 of this title 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.

37 CFR 1.163 Specification and arrangement of application elements.

(a) The specification must contain as full and complete a disclosure as
possible of the plant and the characteristics thereof that distinguish
the same over related known varieties, and its antecedents, and must
particularly point out where and in what manner the variety of plant has
been asexually reproduced. In the case of a newly found plant, the
specification must particularly point out the location and character of
the area where the plant was discovered.

(b) Two copies of the specification (including the claim) must be
submitted, but only one signed oath or declaration is required.

(c) The elements of the plant application, if applicable, should appear
in the following order:

(1) Plant Application Transmittal Form.

(2) Fee Transmittal Form.

(3) Title of the invention.

(4) Cross-reference to related applications.

(5) Statement regarding federally sponsored research or development.

(6) Background of the invention.

(7) Brief summary of the invention.

(8) Brief description of the drawing.

(9) Detailed Botanical Description.

(10) A single claim.

(11) Abstract of the Disclosure.

(12) Drawings (in duplicate).

(13) Executed oath or declaration.

(14) Plant color coding sheet.

(d) A plant color coding sheet as used in this section means a sheet
that specifies a color coding system as designated in a color
dictionary, and lists every plant structure to which color is a
distinguishing feature and the corresponding color code which best
represents that plant structure.

37 CFR 1.164 Claim.

The claim shall be in formal terms to the new and distinct variety of
the specified plant as described and illustrated, and may also recite
the principal distinguishing characteristics. More than one claim is not
permitted.

The specification should include a complete detailed description of the
plant and the characteristics thereof that distinguish the same over
related known varieties, and its antecedents, expressed in botanical
terms in the general form followed in standard botanical textbooks or
publications dealing with the varieties of the kind of plant involved
(evergreen tree, dahlia plant, rose plant, apple tree, etc.), rather
than a mere broad nonbotanical characterization such as commonly found
in nursery or seed catalogs. The specification should also include the
origin or parentage of the plant variety sought to be patented and must
particularly point out where, e.g., location or place of business, and
in what manner the variety of plant has been asexually reproduced.

Form Paragraphs 16.01, 16.09, and 16.10 may be used to object to the
disclosure under  37 CFR 1.163(a).

16.01 Specification, Manner of Asexually Reproducing

The application is objected to under  37 CFR 1.163(a) because the
specification does not "particularly point out where and in what manner
the variety of plant has been asexually reproduced".  Correction is
required.

16.09 Specification, Less Than Complete Description

The disclosure is objected to under  37 CFR 1.163(a) because the
specification presents less than a full and complete botanical
description and the characteristics which distinguish over related known
varieties.  More specifically:   [1].

16.10 Specification, Location of Plant Not Disclosed

The disclosure is objected to under  37 CFR 1.163(a) because the
specification does not particularly point out the location and character
of the area where the plant was discovered.

Where color is a distinctive feature of the plant, the color should be
positively identified in the specification by reference to a designated
color as given by a recognized color dictionary or color chart, and the
application should contain a plant color coding sheet. A plant color
coding sheet is a sheet that specifies a color coding system as
designated in a color dictionary, and lists every plant structure to
which color is a distinguishing feature and the corresponding color code
which best represents the color of that plant structure. The plant color
coding sheet provides a means for applicants to uniformly convey
detailed color characteristics of the plant.  Providing this information
in a systematic manner facilitates examination of the application.
Applicants should use the format set forth in Form PTO/SB/20, Plant
Color Coding Sheet.

Form Paragraphs 16.02 and 16.03 may be used to object to the disclosure
or reject the claim, respectively, because of a lack of a clear and
complete disclosure with regard to colors.

Form PTO/SB/20. Plant Color Coding Sheet[GRAPHIC]

16.02 Colors Specified Do Not Correspond With Those Shown

The disclosure is objected to under  35 U.S.C. 112, first paragraph,
because the   [1] colors specified fail to correspond with those shown.

16.03 Rejection, 35 U.S.C. 112, 1st Paragraph, Non-Support for Colors

The claim is rejected under  35 U.S.C. 112, first paragraph, as being
unsupported by a clear and complete disclosure with regard to [1]
colors, for the following reasons: [2].

If the written description of a plant is deficient in certain respects,
a clarification or additional description of the plant, or even a
wholesale substitution of the original description so long as not
totally inconsistent and unrelated to the original description and
photograph of the plant, will not constitute new matter under  35 U.S.C.
132.   Jessell v.   Newland, 195 USPQ 678, 684 (Dep. Comm'r Pat. 1977).

The rules on Deposit of Biological Materials,  37 CFR 1.801-1.809, do
not apply to plant patent applications in view of the reduced disclosure
requirements of  35 U.S.C. 162, even where a deposit of a plant has been
made in conjunction with a utility application (35 U.S.C. 101).

A plant patent is granted only on the entire plant. It, therefore,
follows that only one claim is necessary and only one is permitted. A
method claim in a plant patent application is improper.

---SECTION---1606 Drawings 

37 CFR 1.165 Plant drawings.

(a) Plant patent drawings should be artistically and competently
executed and must comply with the requirements of Section  1.84.  View
numbers and reference characters need not be employed unless required by
the examiner. The drawing must disclose all the distinctive
characteristics of the plant capable of visual representation.

(b) The drawing may be in color and when color is a distinguishing
characteristic of the new variety, the drawing must be in color. Two
copies of color drawings or color photographs must be submitted.

All color drawings should be so mounted as to provide a 2-inch margin at
the top for office markings when the patent is printed.

Form Paragraphs 16.06, 16.07, and 16.11 may be used to object to the
drawing disclosure.

16.06 Drawings Must Be in Duplicate

The disclosure is objected to under  37 CFR 1.165(b) because applicant
has not provided copies of the drawing in duplicate.  Correction is
required.

16.07 Drawing Figures Not Competently Executed

The disclosure is objected to under  37 CFR 1.165(a) because Fig.   [1]
not artistically and/or competently executed.

16.11 Drawings in Improper Scale

The disclosure is objected to under  37 CFR 1.165(a) because the
drawings are of an inadequate scale to show the distinguishing features
of the plant.

---SECTION---1607 Specimens

37 CFR 1.166 Specimens.

The applicant may be required to furnish specimens of the plant, or its
flower or fruit, in a quantity and at a time in its stage of growth as
may be designated, for study and inspection.  Such specimens, properly
packed, must be forwarded in conformity with instructions furnished to
the applicant. When it is not possible to forward such specimens, plants
must be made available for official inspection where grown.

Specimens of the plant variety, its flower or fruit, should not be
submitted unless specifically called for by the examiner.

Form Paragraph 16.13 may be used to require specimens.

16.13 Specimens Are Required

Applicant   [1] required to submit   [2] in accordance with  37 CFR
1.166.

---SECTION---1608 Examination

37 CFR 1.167 Examination.

Applications may be submitted by the Patent and Trademark Office to the
Department of Agriculture for study and report.

The authority for submitting plant applications to the Department of
Agriculture for report is given in:

Executive Order No. 5464, October 17, 1930. Facilitating the
consideration of applications for plant patents.

   I, Herbert Hoover, President of the United States of America, under
the authority conferred upon me by act of May 23, 1930 (Public No. 245)
[now  35 U.S.C. 164], entitled "An act to provide for plant patents,"
and by virtue of all other powers vested in me relating thereto, do
hereby direct the Secretary of Agriculture: (1) to furnish the
Commissioner of Patents such available information of the Department of
Agriculture, or (2) to conduct through the appropriate bureau or
division of the department such research upon special problems, or (3)
to detail to the Commissioner of Patents such officers and employees of
the department, as the Commissioner may request for the purpose of
carrying said act into effect.

35 U.S.C. 164 Assistance of Department of Agriculture.

The President may by Executive order direct the Secretary of
Agriculture, in accordance with the request of the Commissioner, 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 Commissioner officers and employees of the Department.

Plant applications are subject to the same examination process as any
other national application. As such, the statutory provisions with
regard to patentable subject matter, utility, novelty, obviousness,
disclosure, and claim specificity requirements apply (35 U.S.C. 101,
102, 103, and 112). The sole exception in terms of applicability of
these statutory provisions is set forth in  35 U.S.C. 162.

The prior art considered by the examiner is developed by a search of
appropriate subclasses of the United States patent classification system
as well as patent and nonpatent literature data bases. Where
appropriate, a report may be obtained from the Agricultural Research
Service, Horticultural Research Branch, Department of Agriculture.

---SECTION---1609 Report of Agricultural Research Service

Where the examiner considers it necessary to the examination of the
plant patent application, a duplicate file and drawing of the
application are forwarded to the National Program Leader for
Horticultural Crops, Agricultural Research Service (ARS), U.S.
Department of Agriculture, along with a request for a report as to
whether the plant variety disclosed is new and distinct over known plant
varieties.

The report of the ARS is usually accompanied by the duplicate file and
drawing. The report is in duplicate, the original being signed by the
Chief of the Branch. The original copy of the report is retained in the
duplicate file.  As the report is merely advisory to the Office, it is
not a part of the official record of the application and is, therefore,
not given a paper number and is not placed in the original file. The
copy of the report is customarily utilized by the examiner in the
preparation of his or her action on the application and is also retained
in the duplicate file.

The report may embody criticisms and objections to the disclosure, may
offer suggestions for correction of such, or the report may merely state
that:

"Examination of the specification submitted indicates that the variety
described is not identical with others with which our specialists are
familiar."

---SECTION---1610 The Action

The action on the application by the examiner will include all matters
as provided for in other types of patent applications.  See  37 CFR
1.161.

The action may include so much of the report of the ARS as the examiner
deems necessary, or may embody no part of it.  In the event of an
interview, the examiner, in his or her discretion, may show the entire
report to the inventor or attorney.

Form Paragraph 16.12 may be used to reference portions of the ARS
report.

16.12 Report From U.S. Dept. of Agriculture

This application has been submitted to the U.S. Department of
Agriculture for a report.  Pertinent portions follow:   [1]

With reference to the examination of the claim, the language must be
such that it is directed to the "new and distinct variety of plant."
This is important as under no circumstance should the claim be directed
to a new variety of flower or fruit in contradistinction to the plant
bearing the flower or the tree bearing the fruit. This is in spite of
the fact that it is accepted and general botanical parlance to say "A
variety of apple or a variety of blackberry" to mean a variety of apple
tree or a variety of blackberry plant.

Where the application is otherwise allowable, a claim which recites, for
example "A new variety of apple characterized by," may be amended by the
insertion of __ tree __ after "apple"  by an examiner's amendment.

By the same token, the title of the invention must relate to the entire
plant and not to its flower or fruit, thus: Apple Tree, Rose Plant.

Care should also be exercised that the specification does not contain
unwarranted advertising, for example, "the disclosed plant being grown
in the XYZ Nurseries of Topeka, Kansas."  It follows, also, that in the
drawings any showing in the background of a plant, as a sign carrying
the name of an individual, nursery, etc., is objectionable and deletion
thereof is required. Nor should the specification include laudatory
expressions, such as, "The rose is prettier than any other rose."  Such
expressions are wholly irrelevant.  Where the fruit is described,
statements in the specification as to the character and quality of
products made from the fruit are not necessary and should be deleted.

The Office action is typed with an additional copy which is placed in
the duplicate file.  The papers in the duplicate file are not noted on
the index at the back of the duplicate file wrapper.

When it appears that the application must be resubmitted to the ARS, as
when the report indicates that the duplicate file and drawing are
retained, applicant is notified that reply papers must be in duplicate.

The report of the ARS is not in the nature of a publication and matters
raised therein within the personal knowledge of the specialists of the
ARS are not sufficient basis for a rejection unless it is first
ascertained by the examiner that the same can be supported by affidavits
by said specialists (37 CFR 1.104(d)(2)). See Ex parte Rosenberg, 46
USPQ 393 (Bd. App. 1939).

Form Paragraphs 16.04 and 16.08, as appropriate, may be used to reject
the claim.

16.04 Rejection, 35 U.S.C. 102

The claim is rejected under  35 U.S.C. 102 as failing to patentably
distinguish over   [1].

16.08 Rejection, 35 U.S.C. 112

The claim is rejected under  35 U.S.C. 112   [1] because   [2].

---SECTION---1611 Issue 

The preparation of a plant patent application for issue involves the
same procedure as for other applications (37 CFR 1.161), with the
exception that where there are color drawings, the better one of the two
judged, for example, by its sharpness or cleanliness is selected, and to
this one the issue slip is affixed.  The duplicate file is retained in
the examining group until after the application has been patented.  At
certain periods thereafter, such duplicate files are collected and sent
to the abandoned files for storage.

The International Patent Classification symbols, most recent edition,
should be placed on the Issue Classification slip of all plant patent
applications being sent to issue.

All plant patent applications should contain an abstract when forwarded
to the Publishing Division.

---SECTION---1612 UPOV Convention 

On November 8, 1981, the 1978 text of the "International Convention for
the Protection of New Varieties of Plants" (generally known by its
French acronym as the UPOV Convention) took effect in the United States
and two other states that had not been party to the 1961 text, Ireland
and New Zealand. As of February 1, 1997, 32 states were party to the
UPOV Convention: Argentina, Australia, Austria, Belgium, Canada, Chile,
Colombia, Czech Republic, Denmark, Finland, Federal Republic of Germany,
France, Hungary, Ireland, Israel, Italy, Japan, Netherlands, New
Zealand, Norway, Paraguay, Poland, Portugal, Slovakia, South Africa,
Spain, Sweden, Switzerland, Ukraine, United Kingdom, United States of
America, and Uruguay. Most states adhere to the 1978 text. 

Both the 1961 and 1978 texts guarantee to plant breeders in each member
state both national treatment and the right of priority in all other
member states. In many states, new plant varieties are protected by
breeders' rights laws rather than patent laws.  Accordingly, the Paris
(Industrial Property) Convention cannot always be relied on to provide
these and other rights.

Insofar as the patenting of asexually reproduced plants in the United
States is concerned, both national treatment and the right of priority
have been accorded to foreign plant breeders since enactment of the
plant patent law in 1930 (now  35 U.S.C. 161-164). The UPOV Convention
does not yet apply to the protection of sexually reproduced plants under
the Plant Variety Protection Act,  7 U.S.C. 2321 et seq., administered
by the Department of Agriculture.

Application of the UPOV Convention in the United States does not affect
the examination of plant patent applications, except in one instance. 
It is now necessary as a condition for receiving a plant patent to
register a variety name for that plant.

The registration process in general terms consists of inclusion of a
proposed variety name in the plant patent application. The examiner must
evaluate the proposed name in light of UPOV Convention, Article 13. 
Basically, this Article requires that the proposed variety name not be
identical with or confusingly similar to other names utilized in the
United States or other UPOV member countries for the same or a closely
related species. In addition, the proposed name must not mislead the
average consumer as to the characteristics, value, or identity of the
patented plant. Ordinarily, the name proposed for registration in the
United States must be the same as the name registered in another member
state of UPOV. Inclusion of the variety name in the patent comprises its
registration. Rules of Practice are now being developed for
administering this variety naming requirement.

Form Paragraph 16.05 may be used to object to the disclosure as lacking
a common or market name or "denomination" of the plant.

16.05 Name or Denomination for Plant Missing

The disclosure is objected to under  37 CFR 1.121(a)(5) because no
common or market name or "denomination" of the instant plant has been
set forth in the disclosure.  Correction by adding such a name is
required (1001 O.G. 27).

