Patent protection for plant innovations

While Plant Breeder's Rights can be used to protect plant varieties, such as a new cultivar (cultivated variety) of blueberry, patents may protect a plant variety or plants more generically, such as a vegetable plant having particular properties of agronomic value where the distinguishing feature of the plant may be present in a number of different genera or species.

How a patent can protect plant varieties

A patent is capable of protecting the concept that underpins an invention and various different forms (embodiments) of the invention may be claimed. These may include:

• the plant and various parts of the plant,
• progeny of the plant,
• methods of obtaining or using the plant and
• products made using the plant.

For example, if a new therapeutic property of a new plant variant is determined, it may be possible to obtain a patent for the use of the plant in the new therapy as well as for the plant per se.

Patent protection is determined by the nature of the invention as described in the patent specification. The specification must:

1. describe an invention fully and
2. include a set of numbered clauses (claims) that define the invention.

During examination, the claims may be amended, such as in response to an Examiner's objection. Once a patent is granted the claims establish the boundaries of the invention that is its exclusive property of the patent owner.

Examination - novelty and inventive step

Examination of a patent application by the Patent Office includes assessing whether or not the claims are novel, inventive, and define an invention that is useful and is a "manner of manufacture", that is, that the invention is for an artificially created state of affairs in a field of human endeavour.

For novelty, the claimed invention must not have been publicly disclosed before the priority date, which is usually the filing date of the first patent application describing the claimed invention.

Generation of a plant variety per se does not necessarily involve an inventive step. An inventive step (non-obviousness) may be established if the plant displays unexpected characteristics, advantageous features and if its production is not predictable from first principles.

Description requirement for plant varieties

For a plant variety, the description in the patent specification should include how to make and use the plant. If the description is not one that the skilled person could use to produce or reproduce the invention, a deposit of seeds, or the plant, with an appropriate depository may be important. In some situations it is important to deposit propagating material of the plant before a first patent application is filed.

Generally, the specification should include a detailed description of the plant including breeding parents, a source of the parent plants, a description of crossing procedures, detail of any hybrids, how to propagate the plant, a description of the plant's appearance; shape, growth habit, size, lateral branch dimensions, stem colour, foliage, inflorescence, disease resistance and seed production. In addition, the specification should describe the characteristics that distinguish the plant from known plants.

Plant patent and PBR protection in other countries

Specific areas of patent and plant variety legislation vary significantly from country to country although there are common themes. In some countries plant varieties and/or plants per se are excluded from patent protection and it may be necessary to rely on plant variety legislation, if available. Some countries also have lists of species that are registrable under their plant variety legislation.

In many countries such as Europe and China, plants per se may be covered by patents but plant varieties must be covered by PBR.

Plant protection in the United States

The United States (US) is unique in having three forms of plant protection available, a standard utility patent, a plant patent (for asexually reproducing plants) and a plant variety right (for sexually reproducing plants).

A United States plant patent generally provides broad rights to exclude others from asexually reproducing the registered plant and from using, offering for sale or selling the plant so produced, or any of its parts in the United States or from importing the plant so produced or any parts thereof into the United States.

The specification for a US plant patent is typically similar to specifications we draft for Australian patent specifications directed to a plant variety. The requirement is for a full, clear and complete description of the plant, including the characteristics that define the plant and those which distinguish it from related cultivars and its antecedents.

Find out more

Davies Collison Cave is Australia’s largest and most experienced patent attorney firm. If you have any queries about plant protection or any other area of intellectual property, we can customise a presentation to suit your needs. For further information or advice please contact your nearest Davies Collison Cave office.