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. Patents for plants. Whoever in-
vents 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, 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 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

# Plant Patents

thus excludes bacteria. (In re Arzberger, 1940
C. D. 653 ; 521 O. G. 272.)

35 U. S. C. 168. 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 and must
be filed in duplicate (to provide an original
and duplicate file) but only one need be signed
and excuted : 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 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 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 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. 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.

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. The
use of the trade name of a plant variety
referred to in the specification as a parent of
the plant variety sought to be patented or cited
for the purposes of comparison is permitted.
Where the trade name is given such must be
followed by its plant patent number, as for ex-
ample, "Peace" (Plant Patent No. 591). If not
patented such should be so indicated, thus:
"Geneve" (unpatented). Should a parent
variety be an "unnamed seedling", such should
also be designated by its plant patent number
or if not patented it should be so indicated.
Also permitted in the specification is the identi-
fication of a parent plant variety by the appli-
cant's particular code number ..

The trade name of the plant variety sought to
be patented is not permitted in the specification.

Characteristics of the plant variety such as
resistance to diseases, frost, etc., must be sup-
ported in the specification by reciting how these
were determined and the locale and conditions
under which the plant was observed and/or
tested.

Where the plant variety originated from a
found seedling the specification must recite the

locale and conditions under which the parent
seedling was found in order to establish that it
was not found in an uncultivated state.

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.

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Executive Order No. 5464, October 17, 1980. 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
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
drawing (if in color) are forwarded to the
Agriculural Research Service, Horticultural
Crops Research 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 appli-
cation on the search brief cards (there being 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 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.

## 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 utilized
by the Examiner in the preparation of his ac-
tion 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 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 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.

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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 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 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 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

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 in-
corporated in the Office action by quoting
directly from the report, the Examiner 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 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 Rosenberg 46 U. S. P. Q. 393. Board
of Appeals 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.

V

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