1800

OCR transcription for search; preserved printed pages are authoritative

# Section 18. PLANT PATENTS

18-1. Introduction: Scope, Type of Plants Covered

-2.
The Application

-3.
Practice and Examination

-4.
The Action

-5.
Specimens

-6.
Affidavits

-7.
Issue

<!-- PageBreak -->

<!-- PageHeader="PLANT PATENTS" -->

## 18-1. Introduction: Scope, Type of Plants Covered

The authority for the grant of a plant patent lies
in R.S. 4886 which provides in addition to the five classes
of invention for which a person may obtain n utility patent
under stated conditions, an additional class of inventions
as to which, a person "who has invented or discovered and
asexually reproduced any distinct and new variety of plant
other than a tuber-propagated plant" may obtain a patent
therefor.

It is thus quite clear that the grant of a plant pat-
ent is predicated on the fact that: (1) the new variety of
plant must be distinct and (2) that it shall have been asex-
ually 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 dis-
tinot 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 char-
acteristics, color, odor of flower, flavor of fruit, produc-
tivity, form, or ease of asexual reproduction.

The new and distinct variety of plant referred to in
the statute mny be a sport, mutant or hybrid.

"The term "plant" has been interpreted to moan "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 0.0. 272.)

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

with reference to tuber-propagated plants for which a
plant potent cannot be hnd, the term "tuber" is used in its
narrow horticultural sonne ns menning a short, thickened por-
tion of an underground branch. Such plants covered by the
torm "tuber-propagated" are the Irish potato and the Jerusalem
artichoke. This exception is made because this group nlone,
among nsexually reproduced plonts Is propagated by the same
part of the plant thet in sold na food.

<!-- PageBreak -->

<!-- PageHeader="18-2." -->

### The Application

Rule 21 .1 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.

The form of plant patent claim and the limitation of
number of claims to one are specified in Rule 21.4. 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 patent application are
improper as the statute says nothing about methods or arts
in connection with a plant patent. See ex parte Van Over,
supra.

## 18-3. Practice and Examination

The Executive Order by President Herbert Hoover,
dated October 17, 1930, under Authority of the Plant Patent
Act, directs the Secretary 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 designated and authorized
the Chief of the Bureau of Plant Industry to represent the
Agriculture Department in all dealings with the Commissioner
of Patents in furnishing the Commissioner auch 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 received in the division.

<!-- PageBreak -->

The duplicate files of the applications and which
had been marked "Duplicate" by the Application Branch, are
maintained separate from the original files. It is the
original file and the contents 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 applications for patent. The
prior art in the division, in addition to the large number
of plant patents, includes numerous publications, texts on
horticulture, botany, pomology, etc., and color diction-
aries.

It is the practice to forward the duplicate file and
duplicate drawing of the application when acted on by the
Examiner to the Bureau of Plant Industry in the Department
of Agriculture with a letter of transmittal (Form PO 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 21.7) .
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.

As the specialistsof the Bureau of Plant Industry take
anywhere from one to six months for their report and return
of the papers therewith to the division, a plant patent ap-
plication 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 transmittal noti-
fies the Bureau that the application will be reached for
action in the division by a designated 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 original better signed by the Chief of
the Bureau. The original copy of the report is retnited in
the duplicate file. As the report is merely advisory to the
Office, it is not a part of the official record of the appli-
cation and is therefore not given a paper number and is not
placed in the original file.The carbon copy of the report
is customarily utilized by the examiner in the preparation
of his action on the case and Is also retained In the dupli-
cate file.

<!-- PageBreak -->

Where both the duplicate file and drawing a s returned
with the report, the charge card is destroyed. Occasionally
a report is received without return of the duplicate file and
drawing. In such instance the date of the report is noted on
the charge card which is retained in the charge box.

It frequently happens that an amendment is filed be-
fore the duplicate file and drawing are returned with the re-
por At the discretion of the Examiner, this is forwarded
to the Bureau. All amendments and responses filed by the ap-
plicant must be in duplicate. Where it is necessary to for-
ward sare to the Bureau of Plant Industry, 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 objections to
the disclosure, may offer suggestions for correction of such,
may require specimens of the plant, flower or fruit thereof,
may require affidavits of recognized authorities to corrobo-
rate 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 Agriculture, etc.,
or the report may merely state that :

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

18-4.
The Action

The action on the application by the Examiner will in- .
clude all matters as provided for in other types of patent
applications. See Kule 21.1.

The action may include so much of the report of the
Bureau of Plant Industry as the Examiner 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 in-
ventor or attorney.

With reference to the examination of the claim, the
language must be such that it is directed to the "new and dis-
tinct variety of plant." This is important as under no cir-
cumatance should the claim be directed to a new variety of
flower or fruit in contradiction to the pient bearing the
flower or the tree bearing the fruit. This in spite of the
fact that it is accepted and general botanical parlance to
smy - A variety of apple or a variety of blackberry - , to
mean a variety of apple tree or a variety of blackberry plant.

<!-- PageBreak -->

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, char-
acterized by ----- may be amended by the insertion of
\- tree - after "apple" by an Examiner's amendment .

Care should also be exercised that the specification
does not contain unwarranted advertising, for example, the
sclosed plant being grown in the XYZ Nurseries of Topeka,
hunsas. 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 specifiention include
laudatory expressions, such as, "The rose is prettier than
any other rose." Such expressions are wholly irrelevant .

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 application must
be rosubmitted to the Bureau, applicant is notified that
response papers must be in duplicate

18-5.

# Specimens

When the report of the Bureau of Plant industry re-
quests the submission of specimens, see kule 21.6, the Exam-
iner will note such request in his netion indicating in full
the Burenu's requirement as to quantity and stage of growth
of the plant, flower or fruit. The Examiner will further
indicate that such specimens be sent directly to the Bureau
of Plant industry, Beltsville, Maryland with such directions
for identification and packaging, as necessary These speci-
mens 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
instructions in his action for transmittal of the same
directly to the Patent office ..

18-6.
Affidavits

Frequently the Bureau of Plant Industry in its report
states that in view of its lack of sufficient information,
data, specimens, etc., its specialists are unable to determine
that the variety of plant under consideration is how and dis-
tinct and suggests that the Patent office require the appli-
cont to submit affidavits from recognized experts as to the
newness of the variety. See Rule 21.7 The need for such
affidavits when so indicated is incorporated in the office

<!-- PageBreak -->

action by quoting directly from the report, the E; miner
making certain that the action makes it quite clear that
such affidavits are required by the Bureau of Plant Indus-
try. This is necessary to avoid any embarrasment to the
Office; as the need of such affidavits, if made without
reference to the Bureau's requirement could be considered
as the calling in by the Office of unauthorized outside
heJn in determining the patentability of the plant in
ql tion.

18-7.
Issue

The preparation of a plant patent application for
issue involves the same procedure as for other applications
(Rule 21.1), with the exception that where there are colored
drawings, the better one of the two judged, for example, by
1ts 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 put-
ented. At certain periods thereafter such duplicate files
are collected and sent to the abandoned files for storage.