Plant applications are subject to the same examination process as any other national application. As such, the statutory provisions with regard to patentable subject matter, utility, novelty, obviousness, disclosure, and claim specificity requirements apply.
1610 The Action
MPEP SECTION SUMMARY
The language of the claim must refer to a “new and distinct variety of plant”. Absolutely no claim should be directed toward a new variety of flower or fruit. The specification should not include statements with laudatory expressions (prettier roses, etc.) or statements referring to the character and quality of the products made from the fruit.
1611 Issue
MPEP SECTION SUMMARY
The preparation of a plant patent application for issue involves the same procedure as for other applications, with the exception that where there are color drawings, the better one of the two judged, for example, by its sharpness or cleanliness is selected to be printed in the patent. All plant patent applications should contain an abstract when allowed.
1612 UPOV Convention
MPEP SECTION SUMMARY
In many countries, new plant varieties are protected by breeders’ rights laws rather than patent laws. The UPOV Convention attempts to make the process of gaining Intellectual Property rights on plants uniform across the member countries.
Insofar as the patenting of asexually reproduced plants in the United States is concerned, both national treatment and the right of priority have been accorded to foreign plant breeders since enactment of the plant patent law in 1930.
Application of the UPOV Convention in the United States does not affect the examination of plant patent applications, except in one instance.
It is now necessary as a condition for receiving a plant patent to register a variety denomination for that plant.
Inclusion of the variety denomination in the patent comprises its registration.
The registration process in general terms consists of inclusion of a proposed variety denomination in the plant patent application.
UPOV Convention, Article 13:
requires that the proposed variety name must be different from other names used in the U.S. or other UPOV member countries for the same or closely related species
the proposed name must not mislead the consumer of the characteristics, value or identity of the patented plant
the name proposed in one UPOV country must be the same as the name registered in another UPOV member country
The Latin name and the variety denomination for the plant claimed may be included in an application data sheet (ADS).
1613 Right of Priority Based upon Application for Plant Breeder’s Rights
MPEP SECTION SUMMARY
An application for a plant patent may rely upon an application for plant breeder’s rights filed in a WTO member country (or in a foreign UPOV Contracting Party) for priority under 35 U.S.C. 119(a) through (c).
