1600

OCR transcription for search; preserved printed pages are authoritative

# 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
09 Report of Bureau of Plant Industry

1610
The Action

1611
Issue

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

The right to a plant patent stems from :

35 U. S. C. 161. Patents for plants. Whoever invents
or discovers and asexually reproduces any distinct and
new variety of plant, other than a tuberpropagated
plant, may obtain a patent therefor, subject 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. (R. S. 4886; 35 U. S. C., 1946
ed., 31.)

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.)

The same interpretation is given to the words
"invented or discovered" and "new" in connec-
tion with plants as is given in connection with
the other classes of patentable subject matter.

# Plant Patents

The applicant for a patent on a particular plant
variety must have done something to create or
produce such plant variety, which must also be
distinct and new. Thus, a plant found by a
person is not considered patentable. (Ex Parte
Foster, 1951 C. D. 15; 647 O. G. 1005.)

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.

## 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.

The application papers for a plant patent
must be filed in duplicate (to provide an origi-
nal and duplicate file) but only one need be
signed and executed: the second copy may be
a legible carbon copy of the original. The rea-
son 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.

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 163. Specification. The specification must con-
tain as full and complete a disclosure as possible of
the plant and the characteristics thereof that dis-

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tinguish 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.

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 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 anteced-
ents, expressed in botanical terms in the general
form followed in standard botanical text books
or publications dealing with the varieties of
the kind of plant "involved (evergreen tree,
dahlia plant, rose plant, apple tree, etc.), rather
than a mere broad nonbotanical characteriza-
tion 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 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.

A plant patent is granted on the entire plant.
It therefore follows that only one claim is neces-
sary 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 oil, or in lieu 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 ac-
ceptable.

## 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 specifically
called for by the examiner.

## 1608 Examination

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

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 :

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 (Public No. 245) [46 Stat.
376], 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 Ag-
riculture, 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
requests of the 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 upon special problems, or (3) to detail to the

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Commissioner officers and employees of the Depart-
ment.

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 of
Plant Industry to render a report on the appli-
cation as to whether the variety of plant dis-
closed in the application is distinct over known
varieties of plant. 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 of Plant In-
dustry to indicate how the variety of plant dis-
closed is distinct over said patents.

### 1609 Report of Bureau of Plant Industry

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.

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

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 of Plant
Industry, as when the report indicates that the
duplicate file and drawing are retained, appli-
cant is notified that response papers must be in
duplicate.

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

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1611

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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.

The report of the Bureau of Plant Industry
is not in the nature of a publication and matters
raised therein within the personal knowledge
of the specialists of the Bureau of Plant In-
dustry 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
Rosenberg 46 U. S. P. Q. 393. Board of Ap-
peals decision in Plant Patent File 412.

### 1611 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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