MPEP 1601
Introduction: The Act, Scope, Type of Plants Covered

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in Januay 2018

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1601    Introduction: The Act, Scope, Type of Plants Covered [R-11.2013]

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, 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, 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.

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. Plants capable of sexual reproduction are not excluded from consideration if they have also been asexually reproduced.

With reference to tuber propagated plants, for which a plant patent cannot be obtained, the term "tuber" is used in its narrow horticultural sense as meaning a short, thickened portion 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 propagated 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, 112 F. 2d 834, 46 USPQ 32 (CCPA 1940). The term "plant" thus does not include asexual propagating material, per se. Ex parte Hibberd, 227 USPQ 443, 447 (Bd. Pat. App. & Int. 1985).

35 U.S.C. 161 originated as an amendment to the pre-existing patent statute with the Plant Patent Act of 1930. As enacted, the "invents or discovers" requirement limited patent protection to plants "that were created as a result of plant breeding or other agricultural and horticultural efforts and that were created by the inventor." In re Beineke, 690 F.3d 1344, 1352, 103 USPQ2d 1872, 1877 (Fed. Cir. 2012). The plant patent provisions were separated from the utility patent provisions in the Patent Act of 1952 to create 35 U.S.C. 161. Id. at 1348 n.2, 103 USPQ2d 1875 n.2. 35 U.S.C. 161 was amended in 1954 to extend protection to "newly found seedlings," provided they were found in a cultivated state, but did not otherwise alter the scope of plant patent protection. Id. at 1352-53, 103 USPQ2d at 1878-79. In Beineke, the Federal Circuit held that two century-old oak trees found on the lawn of a home were ineligible for patent protection under 35 U.S.C. 161 because they were not created from inception by human activity and created by the inventor (i.e., the patent applicant) as required by the 1930 Act, nor were they "newly found seedlings" under the 1954 amendment. Id. at 1348, 1352, 103 USPQ2d at 1875, 1879.

In reviewing the history of the Plant Patent Act, the Supreme Court explained:

Prior to 1930, two factors were thought to remove plants from patent protection. The first was the belief that plants, even those artificially bred, were products of nature for purposes of the patent law…. The second obstacle to patent protection for plants was the fact that plants were thought not amenable to the "written description" requirement of the patent law. See U.S.C. § 112. *** In enacting the Plant Patent Act, Congress addressed both of these concerns. It explained at length its belief that the work of the plant breeder "in aid of nature" was patentable invention. S. Rep. No. 315, 71st Cong., 2d Sess., 6-8 (1930); H.R. Rep. No. 1129, 71st Cong., 2d Sess., 7-9 (1930). And it relaxed the written description requirement in favor of "a description … as complete as is reasonably possible." 35 U.S.C. § 162.

Diamond v. Chakrabarty, 447 U.S. 303, 311-312 (1980).

An asexually reproduced plant may alternatively be protected under 35 U.S.C. 101, provided the written description requirement can be satisfied. See 35 U.S.C. 112. In J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’ l, Inc., the Supreme Court held that patentable subject matter under 35 U.S.C. 101 includes newly developed plants, even though plant protection is also available under the Plant Patent Act (35 U.S.C. 161 -164 ) and the Plant Variety Protection Act (7 U.S.C. 2321 et. seq.). J.E.M. Ag Supply, Inc. v. Pioneer Hi-Bred Int’ l, Inc., 534 U.S. 124, 143-46, 122 S.Ct. 593, 605-06, 60 USPQ2d 1865, 1874 (2001) (The scope of coverage of 35 U.S.C. 101 is not limited by the Plant Patent Act or the Plant Variety Protection Act; each statute has different requirements and protections). An application filed under 35 U.S.C. 101 may claim the same asexually reproduced plant that is claimed under 35 U.S.C. 161, as well as plant materials and processes involving plant materials. See MPEP § 2105.

The filing of a terminal disclaimer may be used in appropriate situations to overcome an obviousness-type double patenting rejection based on claims to the asexually reproduced plant and/or fruit and propagating material thereof in an application under 35 U.S.C. 101 and the claim to the same asexually reproduced plant in an application under 35 U.S.C. 161.

35 U.S.C. 163 Grant.

In the case of a plant patent, the grant shall include 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.

As provided in 35 U.S.C. 161, the rights associated with a plant patent include the rights associated with a utility patent, and the "right to exclude" has additional terms provided in 35 U.S.C. 163. A plant patent issuing from an application filed after June 7, 1995 has a term which expires 20 years after the filing date of the application, or any earlier filing date claimed under 35 U.S.C. 120, 121 or 365(c). See MPEP § 2701. Plant patent applications will be published pursuant to 35 U.S.C. 122(b).