843.284.8728

PO BOX 2108

MT PLEASANT SC 29465

Plant vs. Utility Patents

There are three types of intellectual property protection for newly “invented” plants in the United States: Plant Variety Protection Certificates, Utility Patent and Plant Patents.  Various similarities and differences of each are presented below.

 

Plant Variety Protection Certificates                   

  • Plant Types Covered
    • Applies to sexually (seed) reproduced plants, tuber propagated plants and F1 hybrids.   The variety must be uniform, stable, and distinct from all other varieties. Fungi, bacteria, and first generation hybrids are excluded
    • Example: turfgrass seed
  • Protection Granted
    • PVP protection covers a single variety and essentially derived varieties.
    • In a Patent, claims define the “metes and bounds” of the invention.  PVP Certificates have no claims.
    • Grants exclusive rights to exclude others from selling the variety, or offering it for sale, or reproducing it, or importing it, or exporting the variety.
    • There are two exemptions to the rights granted. One exists to allow farmers to save seed for use on their own farm or to sell it to their neighbors. Recent court decisions have defined who is a “farmer” and how much seed can be saved. Another exemption allows research to be conducted using the variety.
    • The term of protection runs 18 years from the certificate’s date of issue, or 25 years in the case of a tree or vine.
  • Cost
      • Significantly cheaper than a Utility Patent; between $1000 and $2000.

Plant Patents under 35 U.S.C. 161

  • Plant Types Covered
    • Applies to asexually reproduced plants (buds and cuttings)
    • Example: roses
  • Protection Granted
    • Claims define the “metes and bounds” of the invention.
    • Plant Patents have only one claim.
  • Plant Patent Infringement
    • Plant patent holder has the right to exclude others from asexually reproducing the plant, and from using, offering for sale, or selling the plant so reproduced, or any of its parts, throughout the United States, or from importing the plant so reproduced, or any parts thereof, into the United States.  However, Plant Patent holders cannot exclude others from using their patented varieties in breeding programs.
    • The term for a Patent is now 20 years from initial filing.
  • Cost
    • Significantly cheaper than Utility Patents do to the relative simplicity of the Specification and the time required to collect all data and draft the Specification.  Typically much less PTO office actions and communication required in Plant Patent application prosecution.

Utility Patent under 35 U.S.C. 101

  • Plant Types Covered
    • Sexually reproducing plants (flowers and seeds) and genetically engineered plants
    • Example Cotton seed
  • Protection Granted
    • Claims define the “metes and bounds” of the invention.
    • Utility Patents have multiple claims.
    • Utility Patent protection can be broader: seed deposit claims,trait claims, breeding methods, food product claims.
    • Trait claims cover those varieties developed and disclosed in the patent application without need for seed deposit and cover those varieties independently developed later that fall within the claim.
  • Utility Patent Infringement
    • A patent holder may prevent others from making, using, selling, offering for sale or importing the claimed invention.
    • Furthermore – and a significant difference between Utility and Plant Patents – there is no research exception for [Utility] patented varieties: patent holder can prevent other breeders from using a patented variety in breeding
    • The term for a Utility Patent is now 20 years.
  • Cost
    • Significantly more costly than Plant Patents do to the complexity of multiple claims.

 

 

In summary, PVP Certificates and Utility Patents apply to sexually reproduced plants whereas Plant Patents apply to asexually reproduced plants.  PVP Certificates are much less expensive than Utility Patents however they provide much less protection for the breeder and only last for 18 years as opposed to the 20 year statute for patents.  While there is some overlap between the types of protection available for certain plants, Utility Patents are more common for hybridized and engineered seed crops (namely commodity crops) whereas Plant Patents are the predominant choice for ornamental turf and plant varieties because they provide great protection at an acceptable cost.