1600

OCR transcription for search; preserved printed pages are authoritative

# Chapter 1600

1601
Introduction : The Act, Scope, Type of Plants
Covered

1602
Rules Applicable

1608

Elements of a Plant Application

1604
Applicant, Oath

1605
Specification and Claim

1608
Drawings

1607
Specimens

1608

Examination

1609
Report of Agricultural Research Service

1610
The Action

1611

Issue

## 1601 Introduction: The Act, Scope, Type of Plants Covered

The right to a plant patent stems from:

35 U.S.C. 161. Patente for plants. Whoever Invents
or discovers and asexually reproduces any distinct
and new variety of plant, Including cultivated sports,
mutants, hybrida, and newly found seedlings, other
than a tuber propagated plant or a plant found in an
uncultivated state, may obtain a patent therefor, sub-
ject 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.

With reference to tuber propagated plants,
for which a plant patent cannot be obtained,
the term "tuber" is used in its narrow horticul-
tural sense as meaning a short, thickened por-
tion 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, 1940
C.D. 653; 521 O.G. 272.)

35 U.S.C. 165. 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.

# Plant Patents

## 1602 Rules Applicable

Rule 161. Rules applicable. The rules relating to ap-
plications for patent for other inventions or discoveries
are also applicable to applications for patents for plants
except as otherwise provided.

## 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 (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. The reason for
thus providing an original and duplicate file
is that the duplicate file is utilized for sub-
mission to the Department of Agriculture for
a report on the plant variety, the original file
being retained in the Patent Office at all times.

## 1604 Applicant, Oath

Rule 162. Applicant, oath. The applicant for a plant
patent must be the person who has invented or dis-
covered and asexually reproduced the new and distinct
variety of plant for which a patent is sought (or as
provided in rules 42. 43, and 47). The oath required
of the applicant, in addition to the averments required
by rule 65. must state that he has asexually reproduced
the plant. Where the plant is a newly found plant,
the oath must also state that it was found in a cul-
tivated area.

In an application for a plant patent there
can be joint inventors. See Ex parte Kluis
et al. Board of Appeals decision in Plant
Patent File 707.

## 1605 Specification and Claim

Rule 165. Specification. The specification must con-
tain as full and complete a disclosure as possible of
the plant and the characteristics thereof that distin-
guish 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.

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Two copies of the specification (Including the claim)
must be submitted, but only one need be signed and
executed ; the second copy may be a legible carbon copy
of the original.

Rule 164. Claim. The ciaim 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 char-
acteristics thereof that distinguish the same
over related known varieties, and its ante-
cedents, expressed in botanical terms in the
general form followed in standard botanical
text books or publications dealing with the va-
rieties of the kind of plant involved (ever-
green 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 and in what
manner the variety of plant has been asexually
reproduced. Where color is a distinctive fea-
ture 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.

A plant patent is granted 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.

## 1606 Drawings

Rule 165. Drawings. Plant patent drawings are not
mechanical drawings and should be artistically and
competently executed. Figure numbers and reference
characters need not be employed unless required by
the examiner. The drawing must disclose all the dis-
tinctive characteristics of the plant capable of visual
representation.

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 draw-
ings must be submitted. Color drawings may be made
either in permanent water color or off, or in lien thereof
may be photographs made by color photography or
properly colored on sensitized paper. The paper in
any case must correspond in size, weight and quality
to the paper required for other drawings.

With reference to photographic drawings,
the mounting of the same on a backing of
bristol board or paper of comparable weight
is not acceptable.

### 1607 Specimens

Rule 166. Specimens. The applicant may be re-
quired to furnish specimens of the piant, 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 appli-
cant. When it is not possible to forward such speci-
mens, plants must be made available for official inspec-
tion where grown.

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

## 1608 Examination

Rule 167. Examination. Applications may be sub-
mitted by the Patent Office to the Department of Agri-
culture for study and report.

Affidavits from qualified agricultural or horticultural
experts regarding the novelty and distinctiveness of
the variety of plant may be received when the need
of such affidavits is indicated.

The authority for submitting plant applica-
tions to the Department of Agriculture for re-
port is given in:

Executive Order No. 5464, October 17, 1930. Fa-
cilitating 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 (Publie No. 245) [35 U.S.C.
164], entitled "An act to provide for plant patents,"
and by virtue of all other powers vested in me re-
lating thereto, do hereby direct the Secretary of Agri-
culture : (1) to furnish the Commissioner of Patents
such available information of the Department of Agri-
culture, or (2) to conduct through the appropriate
bureau or division of the department such research
upon special problems, or (3) to detail to the Com-
missioner of Patents such officers and employees of
the department, as the Commissioner may request for
the purpose of carrying said act into effect.

35 C.B.C. 164. Assistance of Department of Agri-
culture. The President may by Executive order direct
the Secretary of Agriculture, in accordance with the
requests of the Commissioner, for the purpose of carry-
into 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 re-
search upon special problems, or (3) to detail to the
Commissioner officers and employees of the Depart-
ment.

With the application judged complete and
acceptable for submission to the Department of
Agriculture, the duplicate file and duplicate

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1610

drawing (if in color),.are forwarded to the
Agricultural Research Service, Horticultural
Crops Rewaroh Branch, Department of Agri-
culture.It is the practice to forward the
duplicate file and duplicate drawing of the ap-
plication with a letter of transmittal (Form
POL-86) including such data as the Examiner
has developed that will enable the Agricultural
Research Service to render a report on the ap-
plication as to whether the variety of plant dis-
closed in the application is distinct over known
varieties of plant.

The initial step in taking the application up
for action is for the Examiner to brief the ap-
plication on the search brief cards (there be-
ing a printed form for each of the plant sub-
classes in Class 47). The sufficiency of the
specification and drawings are determined as to
their completeness and compliance with the
rules, and the applicant is advised of any defi-
ciencies in the disclosure. Transmittal of the
duplicate file to the Department of Agriculture
may be deferred until such time as the appli-
cant submits by appropriate amendment in
duplicate the necessary additional matter
and/or corrections.

### 1609 Report of Agricultural Research Service

The report of the Agricultural Research
Service (A.R.S.) 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 applica-
tion and is therefore not given a paper number
and is not placed in the original file. The
carbon copy of the report is customarily uti-
lized by the Examiner in the preparation of
his action on the case and is also retained in
the duplicate file.

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."

1610 The Action bal ani to woiy ni tad

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 re-
port of the A.R.S. as the Examiner deems
necessary, or may embody no part of it. In
the event of an interview, the Examiner, in his
discretion, may show the entire 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 circum-
stance 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 par-
lance 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 may be allowed a
claim which recites, for example-A new va-
riety 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 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 the name of an individual, nur-
sery, etc., is objectionable and deletion thereof
is required. Nor should the specification in-
clude laudatory expressions, such as, "The rose
is prettier than any other rose." Such expres-
sions 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 A.R.S., as when the re-
port indicates that the duplicate file and draw-
ing are retained, applicant is notified that
response papers must be in duplicate.

Frequently the A.R.S. in its report states

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that in view of its lack of suficient informa-
tion, data, specimens, etc., its specialists are
unable to determine whether the variety of
plant under consideration is new and distinct
and suggests that the patent Office require the
applicant to submit affidavits from recognized
experts as to the newness of the variety. See
Rule 167. The need for such affidavits when
so indicated is incorporated in the Office action
by quoting directly from the report, the Ex-
aminer making certain that the action makes
it quite clear that such affidavits are required
by the A.R.S. This is necessary to avoid any
embarrassment to the Office; as the need of
such affidavits, if made without reference to
the A.R.S.'s requirement, could be considered
as the calling in by the Office of unauthorized
outside help in determining the patentability
of the plant in question.

The report of the A.R.S. is not in the nature
of a publication and matters raised therein
within the personal knowledge of the special-

iete of the A.R.S. 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 specialista. (Rule 107.) See
Ex parte Rosenberg 46 U.S.P.Q. 893. Board
of Appeals decision in Plant Patent File 412.

## 1611 Issue

The preparation of a plant patent applica-
tion for issue involves the same procedure as
for other applications (Rule 161), with the
exception that where there are colored draw-
ings, the better one of the two judged, for
example, by its sharpness or cleanliness is se-
lected, 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 periods thereafter such duplicate
files are collected and sent to the abandoned
files for storage.