Author: Adriana L. Burgy
Editor: Stephanie M. Sanders
Further to the Plant Patent Basics: An Introduction post, here we highlight various aspects of the plant patent application itself. While this post provides the basic requirements of a plant patent application, an applicant should consult the relevant rules and guidance from the USPTO before preparing and filing the application to ensure conformance with any new requirements and/or specific fees for application filing.
Plant patent applications follow the same format as utility applications: the specification should include the following sections:
(1) Title of the invention
(2) Cross-reference to related applications
(3) Statement regarding federally sponsored research or development
(4) Latin name of the genus and species of the plant claimed
(5) Variety denomination
(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
Although the basic requirements for both utility and plant patent specifications are the same, there are some nuances when drafting a plant patent application.
For example, the specification needs to include a description of the plant and the characteristics distinguishing it from related known varieties in botanical terms in a manner similar to botanical textbooks or publications dealing with the varieties of the plant of interest. Applicants also need to include the origin or parentage and the genus and species designation of the plant variety of interest. Additionally, applicants need to identify the location and manner in which the plant was asexually reproduced. And in those instances where color is a distinctive feature of the plant, identification of color should be described by reference to a recognized color dictionary or color chart.
Consideration should be given as to whether to include descriptions pertaining to, for example, the plant’s growth habit, shape at maturity, branching habit, winter dormancy, bark, buds, leaves, fruit, and blossoms. Further, details regarding fragrance, taste, disease resistance, productivity, precocity, and vigor should be included in the written description, even those these features may be challenging to capture in prose.
In instances where the written description of the plant is deficient, an applicant can clarify or add more description of the plant or may even substitute the original specification wholesale, provided that the new description is not totally inconsistent and unrelated to the original description and photograph.
Plant patent applications, and ultimately plant patents, include only one claim in a single sentence format, which covers the entire plant. Method claims are improper. The USPTO illustrates a proper plant patent claim as: “A new and distinct variety of hybrid tea rose plant, substantially as illustrated and described herein.”
In plant applications, drawings or photographs may be in color. View numbers and reference characteristics need not be included. The drawings and/or photographs, however, must disclose all the distinctive characteristics of the plant that are capable of visual representation.
No specimens are required for the plant. The rules on Deposit of Biological Material do not apply to plant patent applications.
As noted in Part I of this series of posts, the plant patent statute requires that a plant on which an application is filed meet patentability requirements. We will examine the requirements for patentability of a plant and prosecution of plant patent applications in part three of Plant Patent Basics: Patentability and Prosecution (coming soon).
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