1600

OCR transcription for search; preserved printed pages are authoritative

# Chapter 1600

1601
Introduction : Scope, Type of Plants Covered

1602
The Application

1603
Practice and Examination

1603.01
The Action

1603.02
Specimens

1603.03
Affidavits

1603.04
Issue

## 1601 Introduction: Scope, Type of Plants Covered

The authority for the grant of a plant patent
lies in R. S. 4886, 35 U. S. C. 31, which provides,
in addition to the four classes of invention for
which a person may obtain a utility patent un-
der stated conditions, an additional class of in-
ventions, as to which a patent may be obtained
by a person "who has invented or discovered
and asexually reproduced any distinct and new
variety of plant other than a tuber-propagated
plant."

It is thus quite clear that the grant of a plant
patent is predicated on the fact that: (1) the
new variety of plant must be distinct and (2)
that it shall have been asexually reproduced
prior to the application for a patent. This
does not mean that it must be a variety of a new
species. The variety of plant to be patentable
may be a new and distinct variety either of an
existing or of a new species, or it may be an
entirely new species of plant. The features
that render a variety distinct are, for example,
growth characteristics, color, odor of flower,
flavor of fruit, productivity, form, or ease of
asexual reproduction.

The new and distinct variety of plant re-
ferred to in the statute may be a sport, mutant
or hybrid.

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, 1940
C. D. 653; 521 O. G. 272.)

In addition to the requirement that the new
variety sought to be patented must be distinct,
it is also mandatory that the same have been
asexually reproduced prior to the application
for patent. Thus it must be conclusively
demonstrated that the variety is capable of
asexual reproduction as by grafting, layering,
or division.

With reference to tuber-propagated plants
for which a plant patent cannot be had, the
term "tuber" is used in its narrow horticultural
sense as meaning a short, thickened portion of

844380-49-14

# Plant Patents

an underground branch. Such plants covered
by the term "tuber-propagated" are the Irish
potato and the Jerusalem artichoke. This ex-
ception is made because this group alone, among
asexually reproduced plants, is propagated by
the same part of the plant that is sold as food.

## 1602 The Application

An application for a plant patent consists
of the same parts as that for a utility patent
(Rule 161), i. e., a petition, specification (Rule
163), claim (Rule 164), oath (Rule 162), and
a drawing (Rule 165), if the nature of the case
admits of such. The application papers are
filed in duplicate (to provide an original and
duplicate file) but only one need be signed and
executed; the second copy may be a legible
carbon copy of the original. Where the draw-
ing is in color two copies of the drawing must
be submitted. Where the drawing is in black
and white a print is placed in each file.

Plant varieties referred to in the specification
by trade names should be further designated
by their plant patent number, if any. If not a
patented variety such should be so indicated.
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. The
description of the plant variety should be in
botanical terms.

The oath required of the applicant in addition
to the averments required in the oath for a util-
ity patent must include the averment that the
applicant has asexually reproduced the new
variety plant. The averment that the new va-
riety of plant has not been introduced to the
public prior to the Act of May 23, 1930 is no
longer required.

The form of plant patent claim and the lim-
itation of number of claims to one are specified
in Rule 164. A plant patent is granted on the
entire plant. It therefore follows that only one
claim is necessary and only one is permitted.
See Ex parte Van Over, Dec. 10, 1941, 24
J. P. O. S. 293. Method claims in a plant pat-
ent application are improper as the statute says
nothing about methods or arts in connection
with a plant patent. See Ex parte Van Over.
supra.

## 1603 Practice and Examination

The Executive Order by President Herbert
Hoover, dated October 17, 1930, under Author-

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ity of the Plant Patent Act, directs the Sec-
retary of Agriculture to:

(1) furnish the Commissioner of Patents
such available information of the Department
of Agriculture, or

(2) conduct through the appropriate bureau
or division of the department such research
upon special problems, or

(3) 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.

In pursuance of the intent of the Executive
Order, the then Secretary of Agriculture desig-
nated and authorized the Chief of the Bureau
of Plant Industry to represent the Agriculture
Department in all dealings with the Commis-
sioner of Patents in furnishing the Commis-
sioner such pertinent information as is available
to the Department and in arranging for special
researches to provide the information desired.

The stamp "PLANT PATENT" is placed
over the words-Patent No .- on the face of
both the original and duplicate files when re-
ceived in the division.

The duplicate files of the applications, which
had been marked "Duplicate" by the Applica-
tion Branch, are maintained separate from the
original files. It is the original file and the con-
tents thereof which constitute the official record
of the application.

The plant patent application is accorded the
same examination for form and substance and
search of the prior art as is accorded other ap-
plications for patent. The prior art in the divi-
sion, in addition to the large number of plant
patents, includes numerous publications, texts
on horticulture, botany, pomology, etc., and
color dictionaries.

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It is the practice to forward the duplicate file
and duplicate drawing of the application to the
Bureau of Plant Industry in the Department of
Agriculture with a letter of transmittal (Form
POL-86) including such data as the Examiner
has developed that will enable the Bureau to
render a report on the application as to whether
the variety of plant disclosed in the application
is distinct over known varieties of plant. (Rule
167.) Prior plant patents which the Examiner
considers pertinent are noted by name and
number in the letter of transmittal and request
is made of the Bureau to indicate how the
variety of plant disclosed is distinct over said
patents.

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Accompanying the duplicate papers and let-
ter of transmittal is a charge card (3 x 5 file
card) which has typed thereon the following
information :

S. N. __ To U. S. Dept. of Agric. Date __
(Duplicate file with Duplicate drawing or
print)

Applicant
Filed
For
Division One-Room 7806

The papers are sealed in a large franked enve-
lope and addressed to the Bureau of Plant In-
dustry, U. S. Department of Agriculture, Wash-
ington 25, D. C. A duplicate charge card is
also made and placed in a charge box main-
tained for plant applications forwarded to the
Bureau of Plant Industry and kept on the
Docket Clerk's desk.

Receipt of the papers by the Bureau of Plant
Industry is acknowledged by return of the
charge card to the division, the card having im-
pressed thereon the Bureau's dated receipt
stamp and the signature of the person receiving
the same. The receipted charge card is filed in
the Plant application charge box, the duplicate
charge card being removed and destroyed.

As the specialists of the Bureau of Plant In-
dustry take anywhere from one to six months
for their report and return of the papers there-
with to the division, a plant patent application
is taken up, in the discretion of the Examiner,
shortly after it is filed or some months before it
would normally be reached for action on the
Examiner's docket, for study and search and
preparation of the letter of transmittal. The
concluding paragraph in the letter of transmit-
tal notifies the Bureau that the application will
be reached for action in the division by a desig-
nated date and request is made that the report
be forwarded to the division before said date.
This is done to insure, as far as possible, that a
plant patent application awaiting a report from
the Bureau of Plant Industry will not carry the
division date.

The report of the Bureau of Plant Industry
is usually accompanied by the duplicate file and
drawing. The report is in duplicate, the origi-
nal being signed by the Chief of the Bureau.
The original copy of the report is retained in
the duplicate file. As the report is merely ad-
visory 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 carbon copy of the re-
port is customarily utilized by the Examiner in
the preparation of his action on the case and is
also retained in the duplicate file.

Where both the duplicate file and drawing
are returned with the report, the receipted

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charge card is forwarded to the Bureau as evi-
dence that the papers have been received. Oc-
casionally a report is received without return
of the duplicate file and drawing. In such in-
stance the date of the report is noted on the
charge card which is retained in the charge box.
A report received without return of the dupli-
cate file and drawing usually requires that the
Office write the applicant to secure additional
information, specimens, affidavits, etc., needed
by the Bureau. In such case, after mailing of
the action, the report and a carbon copy of the
action are placed in a large manila envelope
which has written thereon the identifying data
of the application and marked "Papers For
Duplicate File", which is filed with duplicate
files, the papers to be later placed in the dupli-
cate file when returned.

It frequently happens that an amendment is
filed before the duplicate file and drawing are
returned with the report. At the discretion of
the Examiner, this is forwarded to the Bureau.
Where it is necessary to forward the amendment
to the Bureau, an additional charge card
identifying the application is made out, marked
"Supplemental Papers" and sent along with the
amendment and transmittal memorandum.

The report may embody criticisms and ob-
jections to the disclosure, may offer suggestions
for correction of such, may require specimens
of the plant, flower or fruit thereof, may re-
quire affidavits of recognized authorities to cor-
roborate the allegations of the applicant as to
certain or all of the distinguishing features of
the variety of plant sought to be patented, may
state that the plant will be inspected by a field
representative of the Department of Agricul-
ture, etc., or the report may merely state that :

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

## 1603.01 The Action

The action on the application by the Exam-
iner will include all matters as provided for in
other types of patent applications. See Rule
161.

The action may include so much of the report
of the Bureau of Plant Industry as the Exam-
iner deems necessary, or may embody no part
of it. In the event of an interview, there is no
objection to showing the whole of the report
to the inventor or attorney.

With reference to the examination of the
claim, the language must be such that it is di-
rected 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 black-
berry-, to mean a variety of apple tree or a
variety of blackberry plant.

Where the application may be allowed in view
of a favorable report by the Bureau of Plant
Industry, 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.

Care should also be exercised that the speci-
fication does not contain unwarranted advertis-
ing, for example, "the disclosed plant being
grown in the XYZ Nurseries of Topeka, Kan-
sas." It follows, also, that in the drawings any
showing in the background of a plant, as a sign
carrying a 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, state-
ments in the specification as to the character
and quality of products made from the fruit
are not necessary and should be deleted. The
trade name of the variety sought to be patented
is not permitted in the specification.

The Office action is typed with two carbons.
The second carbon 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 duplicate applica-
tion must be resubmitted to the Bureau, appli-
cant is notified that response papers must be in
duplicate.

## 1603.02 Specimens

When the report of the Bureau of Plant In-
dustry requests the submission of specimens
(see Rule 166), the Examiner will note such
request in his action indicating in full the Bu-
reau's requirement as to quantity and stage of
growth of the plant, flower or fruit. The Ex-
aminer will further indicate that such speci-
mens be sent directly to the Bureau for identi-
fication and packaging as necessary. These
specimens should not be sent to the Patent
Office.

However, corrections to the drawings may
require the submission of specimens when
deemed necessary by the Chief Draftsman. In
such instances, the Examiner will supply in-
structions in his action for transmittal of the
same directly to the Patent Office.

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## 1603.03 Affidavits

Frequently the Bureau of Plant Industry in
its report states that in view of its lack of suffi-
cient information, data, specimens, etc., its spe-
cialists are unable to determine whether the
variety of plant under consideration is new and
distinct and suggests that the Patent Office re-
quire the applicant to submit affidavits from
recognized experts as to the newness of the
variety. See Rule 167. The need for such affi-
davits when so indicated is incorporated in the
Office action by quoting directly from the re-
port, the Examiner making certain that the
action makes it quite clear that such affidavits
are required by the Bureau of Plant Industry.
This is necessary to avoid any embarrassment
to the Office; as the need of such affidavits, if

made without reference to the Bureau's require-
ment, could be considered as the calling in by
the Office of unauthorized outside help in de-
termining the patentability of the plant in
question.

## 1603.04 Issue

The preparation of a plant patent application
for issue involves the same procedure as for
other applications (Rule 161), with the excep-
tion that where there are colored 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 division until after the
application has been patented. At certain pe-
riods thereafter such duplicate files are collected
and sent to the abandoned files for storage.

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