Understand changes to plant patent law

The America Invents Act brought sweeping change to U.S. patent law immediately upon its passage in 2011, by changing from a “First to Invent” system to a “First Inventor to File” system. However, other changes in the act were implemented over an 18-month period. Some of the more recent changes affect plant breeders seeking plant patent protection. Sam McCoy is owner of Perennial Patent Co., a full-service patent agency that specializes in plant patents and utility patents for seed grown turfgrass, agronomic and horticulture crops. Here’s his take on how to make sense of the changes.
 

The good

Plant patents are cheaper than ever… a lot cheaper. In addition to a general reduction in the U.S. Patent and Trademark Office’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 four or fewer patents and you also meet certain income requirements, you will qualify for a 75 percent 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. Prior to AIA, a plant breeder would have paid more than three times that 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 one-year “grace period” from the date of first sale or public disclosure of a new plant, in this country (i.e. the U.S.), 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 there 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.

For more: www.perennialpatents.com