Page 7 - Grapevine July-August 2019

In The Winery

are grown from short, thickened portions of an A plant patent enables you to exclude others from
underground branch, such as the Irish potato or the asexually reproducing the plant, from using, offer-
Jerusalem artichoke. The policy reason for exclud- ing for sale, selling in, or importing into, the United
ing these asexually produced plants is that they are States, the plant so reproduced, or any of its parts
propagated by the same part of the plant that is (e.g., grapes) without your written permission or
sold as food. license. How they acquire the new variety is irrele-
vant; possession of illegally propagated plants of a
A Brief History patented species is infringement, even if the repro-
duction is inadvertent. Not only does this protect
Prior to enactment of the U.S. Plant Patent Act of your ability to maintain exclusive use of the new
1930, two factors kept plants from patent protec- variety, but it can open a new revenue stream as
tion. First, even plants that were artificially bred the patent can be licensed, giving you a royalty for
were considered products of nature. Second, it every vine of the new variety that is sold. As with
was thought that plants were not capable of being other forms of patents, the downsides to seeking
described in sufficient detail to satisfy the rigorous the protection of a plant patent are the initial cost
requirements of 35 U.S.C. §112(a), which provides (which can be about $8,000) and the limited term
that the application for a patent “shall contain a of protection (20 years from the application filing
written description of the invention, and of the date).
manner and process of making and using it, in such
full, clear, concise, and exact terms as to enable How Do I Apply for a Plant Patent?
any person skilled in the art to which it pertains,
or with which it is most nearly connected, to make As with utility and design patents, it is possible
and use the same...” In enacting the U.S. Plant for you to file and prosecute your own plant pat-
Patent Act, Congress recognized the contribution ent application. The U.S. Patent and Trademark
made by someone who creates a plant that did not Office, however, has very strict rules and processes
otherwise exist in nature and relaxed the written for how applications are to be made and, in most
description requirement for plant patents to, “a cases, it is much simpler to hire a competent patent
description… as complete as is reasonably possi- attorney to handle the application process for you.
ble.” Regardless of whether you hire an attorney or do it
yourself, there is some information you will have to
Should You Patent Your New Variety provide.
of Wine Grape Vine?
The application must give “as full and complete
If you develop a new variety of wine grape vine a disclosure as possible of the plant and the char-
that is particularly well suited for a certain growing acteristics thereof that distinguish the same over
environment, or yields more grape juice per acre related known varieties… and must particularly
than its precursor varieties, or is resistant to smoke point out where and in what manner the variety of
taint, or just has a unique flavor profile, it may plant has been asexually reproduced.” As an exam-
have significant market value. If so, there are two ple, U.S. Plant Patent No. 30,263, “Grape Plant
ways to protect your discovery. First, you could Named ‘Crimson Pearl,’” issued on March 5, 2019
simply keep the new variety a trade secret. This and contained the following description:
would require that you only share the details of the
variety with those who need the information to do “’Crimson Pearl’ is a new and distinct variety of
their job and take measures to ensure that no cut- grape plant selected from a group of seedlings
tings, seeds, or other materials leave your property resulting from a controlled cross of female parent
that could be used to reproduce the new plant. If `MN 1094` (not patented) and male parent `E.S.
someone else independently develops your variety, 4-7-26` (not patented) carried out at Hugo, Minn. in
you will have little recourse against their use of the 1996. `Crimson Pearl` was selected for its excellent
new vine. winter hardiness, late bud break in springtime and

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