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Plant Breeders – What Does the America Invents Act Mean For You?

Enacted in 2011, the America Invents Act implemented sweeping change to United States Patent Law by changing from a “First to Invent” system to a “First Inventor to File” system.  This paradigm shift brought with it a whole host of changes but, for plant breeders and plant patents, we can boil this down to a few changes that you need to know.  Without going into the minutia, let’s boil it down to what these changes me to plant breeders seeking plant patent protection:

THE GOOD: Plant Patents are cheaper than ever… a lot cheaper.  In addition to a general reduction in the USPTO’s “filing fee schedule”, AIA also created other discounts for plant breeders.  The most significant discount created is known as the “micro entity discount” where, if you are a breeder that has filed 4 or fewer patents and you also meet certain income requirements, you will qualify for a 75% reduction in government fees!  Additionally, AIA also did away with the $300 “Publication Fee” which was traditionally charged upon allowance of a breeder’s plant patent application. In simple terms, as of January 1 2014, plant patent fees can be as little as $475 whereas prior to AIA, a plant breeder would have paid more than three times this amount.  If you don’t qualify for the micro entity discount, don’t fret because you likely still qualify for a significant discount known as the “small entity” discount which is available to all individuals and businesses with fewer than 500 employees.

THE BAD: To be safe, you should file for protection before publicly disclosing your new plant in any form or fashion.  Under pre-AIA law, the USPTO allowed a 1-year “grace period” from the date of first sale or public disclosure of a new plant, IN THIS COUNTRY (i.e. the USA), before a breeder had to file their plant patent application.  This meant that breeders could basically get a one year head start on trials, propagation, etc before they needed to decide whether the new plant was worthy of moving forward with commercialization and, consequently, with patent protection…a common practice used by all breeders and licensing agents.

Under post-AIA law, a new plant is barred from plant patent eligibility if it has been any prior disclosure of the new plant in any way, anywhere in the world.  That is a very significant change. However,, there is an asterisk…an exception that allows breeders to still take advantage of the one year grace period.  This exception states that, if the prior public disclosure (which could be a sale, offer for sale, trials, displays, promotions, etc) made by the breeder or by someone whom obtained the new plant directly from the breeder, within the last year, a breeder ‘may’ still be able to use the one-year grace period.  Without dissecting the specifics of said caveats just know this: the one-year grace period is no longer a given…a breeder must now petition to use the grace period and it is not a guarantee that the petition will be granted.  So these days it’s better to play it safe and file for protection before showing your new plant to anyone!