In 2011, a bill was signed into law which brought about the greatest changes to patent law in three generations. This new law is commonly referred to as the America Invents Act or “AIA”. The changes implemented by AIA affect ALL inventors… this includes plant breeders…and if you are not familiar with these new provisions, your actions (or inaction) could render your new plant ineligible for patent protection. Below is a summary of AIA, the changes implemented by the law and some key points you need to be aware of if you plan to protect your new plants with a US Plant Patent.
General purpose of the America Invents Act:
The intended purpose of AIA was to update the US’s antiquated patent system to make it more functional in the global economy of today. Some specific goals of the law are:
- Align US patent law with that of the rest of the world (by switching to a First to File system; also, see Sale or Use “In This Country”, below)
- Spur innovation (by switching to a First to File system and by reducing fees)
- Speed up patent examination (by hiring more personnel)
- Reduce a backlog of applications currently at the US Patent Office (by hiring more personnel)
- Reduce patent trolling (by limiting the number of defendants that can be named in an infringement suit)
“First to Invent” vs. “First Inventor to File”:
AIA changes the US Patent system from a “First to Invent” to a “First Inventor to File” system which shifts emphasis from the date an invention was invented to the date its inventor dropped an application for said invention at the patent office. So, under the old system, let’s say that two inventors have invented the same mousetrap, Inventor A and Inventor B, and Inventor A invented his trap before Inventor B, but filed after Inventor B… Provided he could prove it, Inventor A would be entitled to a patent and Inventor B would not. Under the new “First to File” system, it doesn’t matter who invented the mousetrap first…only who filed their application first! This is “in line” with the way that patent law operates in most other countries.
So, what does that really mean for the hort industry and plant breeders? The first thing to consider is that “Plant Patents” are not scrutinized as intensely as conventional “Utility Patents”. That is, you could have 10 breeders file a patent applications for 10 green-white variegated Liriope and they would probably all get patents. With hard goods (and conventional patents), it’s easier for the patent office to determine if one invention is the same, nearly the same, or obvious to create in view of another existing invention. So, as we prosecute a Plant Patent, we’re not so much worried about another breeder lodging a intervening or interfering patent application for a similar variety; we’re usually concerned that our clients’ may take actions prior to filing that could hurt their own chances of getting a patent.
OK, So Specifically, What has Changed and What Does it Mean for Plant Breeders?:
For reference, the bulk of the changes to patent prosecution brought about by AIA that I will discuss can be attributed to one section of patent law: 35 U.S.C. 102(a)-(d)…the “Novelty” or “Prior Art” law, as it is sometimes referred. To break it down, here’s what has changed as of January 16th, 2013:
The “Old” One Year Grace Period vs. the “New” One Year Grace Period; and “Rule 130”:
It’s important to note that US patent law has always provided a one-year “grace period”, whereby a plant breeder had one year from the first public disclosure of their new plant in the United States (whether that disclosure was a listing on a website, a catalog/brochure, an offer for sale, showing at a tradeshow or open house, etc) or first patent/PBR filing date anywhere in the world, in which to file a patent application. You could say that it was an unquestioned right of the breeder. However, AIA changes this…
The “New” One Year Grace Period and “Rule 130 Declarations”:
The law still provides a one year grace period but it is now conditional. That is, if a breeder has previously disclosed their new plant (within the one year grace period), they now have the burden of filing an affidavit or declaration to disqualify those prior disclosures as prior art in order to rely upon the new “grace period”. So breeders should carefully document the evidence necessary to establish why the grace period is applicable. This documentation will include specific details of how, when and to whom the new plant was disclosed. Once submitted, it is then up the United States Patent Office Examiner to use their discretion to determine if the declaration is satisfactory. So, where the one year grace period used to be a right of the plant breeder, it is now a conditional “luxury” for which they must qualify with the Patent examiner having the ultimate discretion as to whether or not the breeder’s declaration is acceptable. These declarations are known as the Rule 130 Declaration.
Sale or Use “In This Country”:
Pre-AIA law stated that any sale or public use in a foreign country would not serve as “prior art” to bar patent eligibility. In other words, sales or public use of a new plant in any country other than the United States would not serve as a critical date and would initiate the one year grace period. So under pre-AIA law, a Lobelia breeder in Australia that selected a new variety could sell that variety in Australia for as long as he/she likes and still be able to obtain a US Plant Patent, provided they did not file for patent or PBR protection in any other country more than one year earlier. Pre-AIA law stated that only sale or public use that occurred “in this country” (as it was stated in the law) and longer than one year prior would serve as “prior art” which would bar the invention from patent eligibility. The new AIA law does away with the “in this country” verbiage, essentially putting disclosures in foreign countries on equal footing with disclosures in the Unites States. So, under AIA, this same Australian Lobelia breeder that he’s been selling in Australia for 3 years would now be barred from patent eligibility.
Reduction in Fees:
In addition to the negative impact to 35 USC 102 mentioned above, AIA has brought about a mixed-bag of changes with regards to the USPTO patent fees, resulting in a roller coaster ride of surcharges, increases on this fee, decreases on that fee and, after the first of the year…more decreases which will result in an overall discount! How much of a discount? A whopping $5.00 less than pre-AIA. However, the total fees increased about 12% as soon as the law took effect in Sept 2011 and then increased another 10% on March 19th 2013. So, the updated USPTO fee schedule that takes effect on January 1, 2014, while only being $5.00 less than pre-AIA will actually be 25% lower than the current fee rates. In addition to this “good news”, AIA also introduces some new discounts for a specific group of individuals which I think will largely benefit independent plant breeders.
“Small Entities” – In order to discuss the new discounts we have to first define the Small Entity discount… Patent Law has long provided that an individual(s), a nonprofit organization, or a company with under 500 employees qualify for a “Small Entity” discount of Patent Office’s fees; specifically, a 50% discount off of ‘most’ filing fees. AIA has not changed the Small Entity status but the law provides a new class of discounts which will benefit many independent breeders which is classified as the Micro Entity discount. The Micro Entity provisions went into effect on March 16th 2013.
“Micro Entities” – Obviously, most nurseries/breeding companies/licensing agencies/etc will qualify for Small Entity status, but it is the independent breeders who will benefit the most from the new fee schedule and the micro entity provisions. For our purposes here, an independent breeder is an individual who will not ASSIGN their patent rights to a company but will rather exploit their patent themselves and/or license the patent rights to a third party once they receive a patent. In my experience, this is typically an owner-operator nurseryman that has discovered a mutation/sport in their nursery that sells the plant through his/her nursery and/or licenses the rights to other growers or a licensing company. These individuals are becoming a larger contributor to the “new plant” market as our industry awakens to the value of intellectual property, branding, etc… this is probably a story in and of itself, now that I think about it!
So, AIA now provides that individuals whom have filed fewer than 4 patent applications and whom also meet certain income requirements (that their previous year’s income was less than 3-times the US median income in the previous year) can qualify for the “Micro Entity” discount on certain USPTO fees. The newly created Micro Entity discount is 75% off of ‘most’ filing fees. So, as of January 1, 2014, independent breeders will pay approximately 50% less in government fees to prosecute a patent application than they are currently.
Confused Yet? We realize the changes are complex so perhaps the best course of action is to give us a call to discuss what AIA may mean to you. You have invested a great deal of time, money and effort into selecting your new plant; don’t let a change in the law take it all away –