By: Brian D. Kaider, Esq.
When most people think of patents, they think of new machines, new medicines, or improved manufacturing processes. These inventions are protected by “utility patents.” Some people may also be familiar with “design patents,” which protect a novel ornamental design, such as the front grill of a luxury car. But, there is a third class of patents with which most people are unfamiliar, “plant patents.” As the name suggests, plant patents protect new plant varieties, such as a new strain of wine grape vine.
Not all plants are eligible for patent protection, however. United States Code, Title 35, Section 161 provides that: “[w]hoever 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 therefore…”
There are some key words in that statute, most importantly, “asexually reproduces.” Asexually propagated plants are not grown from seeds, but by rooting of cuttings, layering, budding, grafting, inarching, etc. Plants capable of sexual reproduction are not excluded from patent eligibility if they are also capable of being reproduced asexually. “Tuber propagated plants” are those that are grown from short, thickened portions of an underground branch, such as the Irish potato or the Jerusalem artichoke. The policy reason for excluding these asexually produced plants is that they are propagated by the same part of the plant that is sold as food.
A Brief History
Prior to enactment of the U.S. Plant Patent Act of 1930, two factors kept plants from patent protection. First, even plants that were artificially bred were considered products of nature. Second, it was thought that plants were not capable of being described in sufficient detail to satisfy the rigorous requirements of 35 U.S.C. §112(a), which provides that the application for a patent “shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same…” In enacting the U.S. Plant Patent Act, Congress recognized the contribution made by someone who creates a plant that did not otherwise exist in nature and relaxed the written description requirement for plant patents to, “a description… as complete as is reasonably possible.”
Should You Patent Your New Variety of Wine Grape Vine?
If you develop a new variety of wine grape vine that is particularly well suited for a certain growing environment, or yields more grape juice per acre than its precursor varieties, or is resistant to smoke taint, or just has a unique flavor profile, it may have significant market value. If so, there are two ways to protect your discovery. First, you could simply keep the new variety a trade secret. This would require that you only share the details of the variety with those who need the information to do their job and take measures to ensure that no cuttings, seeds, or other materials leave your property that could be used to reproduce the new plant. If someone else independently develops your variety, you will have little recourse against their use of the new vine.
A plant patent enables you to exclude others from asexually reproducing the plant, from using, offering for sale, selling in, or importing into, the United States, the plant so reproduced, or any of its parts (e.g., grapes) without your written permission or license. How they acquire the new variety is irrelevant; possession of illegally propagated plants of a patented species is infringement, even if the reproduction is inadvertent. Not only does this protect your ability to maintain exclusive use of the new variety, but it can open a new revenue stream as the patent can be licensed, giving you a royalty for every vine of the new variety that is sold. As with other forms of patents, the downsides to seeking the protection of a plant patent are the initial cost (which can be about $8,000) and the limited term of protection (20 years from the application filing date).
How Do I Apply for a Plant Patent?
As with utility and design patents, it is possible for you to file and prosecute your own plant patent application. The U.S. Patent and Trademark Office, however, has very strict rules and processes for how applications are to be made and, in most cases, it is much simpler to hire a competent patent attorney to handle the application process for you. Regardless of whether you hire an attorney or do it yourself, there is some information you will have to provide.
The application must give “as full and complete a disclosure as possible of the plant and the characteristics thereof that distinguish the same over related known varieties… and must particularly point out where and in what manner the variety of plant has been asexually reproduced.” As an example, U.S. Plant Patent No. 30,263, “Grape Plant Named ‘Crimson Pearl,’” issued on March 5, 2019 and contained the following description:
“’Crimson Pearl’ is a new and distinct variety of grape plant selected from a group of seedlings resulting from a controlled cross of female parent `MN 1094` (not patented) and male parent `E.S. 4-7-26` (not patented) carried out at Hugo, Minn. in 1996. `Crimson Pearl` was selected for its excellent winter hardiness, late bud break in springtime and excellent suitability as a red wine grape. Asexual propagation by hardwood cutting was first carried out in 2002 at Hugo, Minn.; subsequent asexual propagations have shown the variety to be stable and to reproduce true to type through successive generations.”
Notice that the plant was first created in 1996 and the first asexual reproduction was carried out in 2002, yet the application for this patent was not filed until 2016 and issued in 2019. This is an important point, because plant patents are subject to the requirements of 35 U.S.C. §102(a)(1), which provides that the applicant will not be entitled to a patent if the claimed invention was “described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” In this case, twenty years elapsed between the first creation of the variety and the filing date. In order to satisfy section 102, therefore, the inventor must not have described the new variety in any printed publication or sold the vine or made it publicly available during that twenty year period.
As part of the application, photographs or detailed drawings that are artistically and competently executed must be included of the plant. If color is a distinguishing characteristic of the new variety, the photographs or drawings must be submitted in color. In some cases, the examiner may also require that the applicant submit specimens of the plant, or its flower or fruit, at a time in its stage of growth that the examiner designates, for study and inspection (though if the examiner requests a specimen in the form of a bottle of finished wine, the request should be viewed with a bit of skepticism).
As with utility patents, examination of the application involves a comparison of the claimed invention to the “prior art” (i.e., the plants known to have existed before the application). Generally, this comparison involves a search of appropriate subclasses of the US patent classification system as well as patent and non-patent literature databases. In some cases, however, an examiner will request an analysis from the Agricultural Research Service, Horticultural Research Branch of the Department of Agriculture. The authority for this type of request comes from an Executive Order issued by President Herbert Hoover in 1930.
Because plant patents apply only to the whole plant and not parts thereof, they must be claimed in their entirety. In other words, your patent should not claim “a new variety of grape characterized by…” or be titled, “A New Variety of Grape, named ‘XYZ,’” because it is not the grape itself that is subject to the patent, but the entire grape vine.
This raises the question of why a new variety has to be “named” at all. The answer lies in The International Convention for the Protection of New Varieties of Plants (generally known by the French acronym “UPOV Convention”). As a signatory to this convention, the United States requires the applicant to include a “variety denomination” for the new plant. The examiner must evaluate this denomination to ensure it is not identical with or confusingly similar to other names utilized in the United States or other UPOV member countries for the same or a closely related species. Further the proposed denomination must not mislead the average consumer as to the characteristics, value, or identity of the patented plant. If this language seems familiar, it is essentially the same standard that is applied for evaluation of a trademark application.
Plant patents are a useful tool to protect new varieties of grape vines. Growers should be aware not only of the ability to protect their discoveries, but of the basic requirements to obtain patent protection and the actions that may potentially jeopardize their opportunities to seek protection. A knowledgeable patent attorney, engaged early in the process, can help to identify those new varieties that are eligible for a plant patent and to avoid waiving potential patent rights.
Brian Kaider is a principal of KaiderLaw, an intellectual property law firm with extensive experience in the craft beverage industry. He has represented clients from the smallest of start-up breweries to Fortune 500 corporations in the navigation of regulatory requirements, drafting and negotiating contracts, prosecuting trademark and patent applications, and complex commercial litigation.