1600

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# Chapter 1600

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

1602 Rules Applicable

1603
Elements of a Plant Application

1604 Applicant. Oath

1605
Specification and Claim

1606 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, hybrids, and newly found seedlings. other
than a tuber propagated plant or a plant found in an
uncultivated state, mas 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 propa-
gated 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. 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.

# Plant Patents

## 1602 Rules Applicable

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

## 1603 Elements of a Plant Application [R-19] .

An application for a plant patent consists of
the same parts as other applications and must
be filed in duplicate (Rule 163 (b) ), but only one
need be signed and executed; the second copy
may be a legible carbon copy of the original.
Two copies of color drawings must be submitted,
Rule 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
Office at all times.

Applications for plant patents 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 Application
Branch will notify the applicant immediately
of this deficiency and require the same to be
rectified within one month. Failure to do so
will result in loss of the filing date.

## 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 distinet
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 or declaration must also state that it was found
in a cultivated area.

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

1605 Specification and Claim [R-19]

35 U.S.C. 162. Description, claim. No plant patent
shall be declared invalid for noncompliance with see-

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tion 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.

Rule 163. Specification. (a) The specification must
contain as full and complete r. 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.

(b) 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 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
«laim 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 [R-19]

Rule 165. Drawingx, fa) 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-
tinetive 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 draw-
ings must be submitted. Color drawings may be made

either in permanent water color or oli, 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 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 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 specif-
ically called for by the examiner.

## 1608 Examination [R-19]

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

(b) Affidavits from qualified agricultural or horticul-
tural 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 :

Erceutire Order No. 5464. October 17, 1930. Fa-
rilitating 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
T .. 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 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 U.S.C. 164. Assistance of Department of Agri-
culture. The President may by Executive order direct
the Secretary of Agriculture. in accordance with the
request of he Commissioner, for the purpose of carry.
ing 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 non special problems, or (3) to detail to the
Commissioner officers and employees of the Department.

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

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drawing (if in color) are forwarded to the Ag-
ricultural Research Service, Horticultural
Crops Research Branch, Department of Agri-
culture. It is the practice to forward the dupli-
cate file and duplicate drawing of the applica-
tion 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
disclosed 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 being
a printed form for each of the plant subclasses
in Class 47), The sufficiency of the specification
and drawings are determined as to their com-
pleteness and compliance with the rules, and
the applicant is advised of any deficiencies in
the disclosure. Transmittal of the duplicate file
to the Department of Agriculture may be de-
ferred until such time as the applicant submits
by appropriate amendment, in duplicate, the
necessary additional matter and/or corrections.
[R-23]

## 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 application 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 Exam-
iner in the preparation of his action on the
case and is also retained in the duplicate file.

The report may embody criticisms and objec-
tions to the disclosure, may offer suggestions for
correction of such, may require speciments of
the plant, flower or fruit thereof, may require
affidavits of recognized authorities to corrobor-
ate 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 [R-23]

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 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 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 may be allowed 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 specifi-
cation 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, nursery,
etc., is objectionable and deletion thereof is re-
quired. Nor should the specification include
laudatory expressions, such as, "The rose is pret-
tier than any other rose." Such expressions are
wholly irrelevant. Where the fruit is described,
statements in the specification as to the char-
acter 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 o fthe duplicate file wrapper.

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

Frequently the A.R.S. in its report states
that in view of its lack of sufficient information,
data, specimens, etc., its specialists are unable
to determine whether the variety of plant under

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## 1611

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consideration is new and distinct and suggests
that the Patent Office require the applicant to
submit affidavits or declarations from recog-
nized experts as to the newness of the variety.
See Rule 167.

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 specialists 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 specialists. ( Rule 107.) See Ex parte Rosen-
berg 46 USPQ 393. Board of Appeals deci-
sion in Plant Patent File 412.

1611 Issue [R-23]

The preparation of a plant patent applica-
tion 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 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.

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