The Green Revolution of the 20th century increased agricultural production worldwide primarily through high-yielding plant varieties. However, in order to sustainably feed the estimated 9 billion people who will inhabit the earth in 2050, further technological advances in agriculture are needed. To incentivize investment in plant breeding and new variety development, governments worldwide have created legal forms of enforceable commercial protection. In the United States, those forms include (1) plant variety protection, (2) plant patents, and (3) utility patents.
Plant Variety Protection
The Plant Variety Protection Office (PVPO) of the U.S. Department of Agriculture provides intellectual property protection to breeders of new varieties of seeds and tubers. Anyone who is the breeder of a unique variety of a sexually reproduced or tuber-propagated plant may apply for plant variety protection. The applicant may be an individual, a public institution, or a corporation.
Upon receiving applications, the PVPO examines them to establish that the varieties are new, distinct, uniform and stable. The following are general program requirements:
- Completing all application forms. See https://www.ams.usda.gov/services/plant-variety-protection/pvpo-forms;
- Paying requisite fees. Currently, a fee of $4,382 USD must be paid with the application, and a certificate fee of $768 USD must be paid upon issuance of the certificate (total cost of protection is $5,150 USD). These fees are subject to change and are non-refundable. There are no maintenance fees;
- Providing a variety name that does not conflict with an existing name for the crop; and
- Depositing of seeds or tissue cultures.
PVP Certificate owners have the right to exclude others from selling, marketing, reproducing, importing or exporting the protected variety for 20 years (25 years for trees and vines) from the issuance of the certificate. Since 1970, over 10,000 PVP Certificates have been issued.
Under 35 U.S.C. § 161, “[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 therefor….” Asexually propagated plants include those that are reproduced by means other than from seeds, such as by the rooting of cuttings, by layering, budding, grafting, or inarching.
The specification must contain as full and complete a disclosure as possible of the plant and the characteristics that distinguish it over related known varieties, and must particularly point out where and in what manner the variety of plant has been asexually reproduced. For a newly found plant, the specification must particularly point out the location and character of the area where the plant was discovered. Only one claim is permitted, and it must be directed to the new and distinct variety of the specified plant as described and illustrated, and may also recite the principal distinguishing characteristics.
The grant of a plant patent from the U.S. Patent and Trademark Office (USPTO) includes the right to exclude others from asexually reproducing the plant, and from using, offering for sale, or selling the plant, or any of its parts, or from importing the plant into the United States. A plant patent has a term which expires 20 years after the filing date of the application. The patent protects a single plant and its asexual progeny, and no maintenance fees are required to keep the patent in force.
Utility patents are technology neutral, in that they are available for both sexually and asexually propagated plants, and they are not limited to a single plant variety or a single claim. They can be used to protect, for example, genetically modified plant genes, proteins and products, transgenic plants, a class of varieties with specific traits and methods of making or using the plants. However, naturally occurring plants cannot be protected.
The requirements for patentability include utility, novelty, non-obviousness, written description and enablement, and the grant of a utility patent from the USPTO gives the patentee the right to exclude others from making, using, offering for sale, or selling the invention throughout the U.S. or importing the invention into the U.S. A utility patent has a term which expires 20 years after the filing date of the application, and three separate maintenance fees are required to keep the patent in force for the entire term (currently totaling $12,600 USD for a large entity).
Utility patents are typically more difficult to obtain than PVP Certificates or plant patents, and are more expensive. However, according to data obtained from the USPTO, the number of utility patents in agricultural technologies has increased steadily over the past decade. Figure 1 shows the total number of issued patents from different sectors in the agricultural industry over the past 10 years.
Figure 1: Issued Patents by Classification in the Ag Industry. CPC Class A01B (Soil working in agriculture or forestry; parts, details or accessories of agricultural machines or implements, in general); A01C (Planting; sowing; fertilizing); A01D (Harvesting; mowing); A01F (Processing of harvested produce; hay or straw presses; devices for storing agricultural or horticultural produce); A01G (Horticulture; cultivation of vegetables, flowers, rice, fruit, vines, hops or seaweed; forestry; watering); A01H (New plants or processes for obtaining them; plant reproduction by tissue culture techniques).
Together, PVP and patents form a complementary IP system in the U.S., and both of which are necessary to help incentivize the agriculture industry to develop the technologies necessary to feed the growing global population.
 Intellectual Property Protection for Plants in U.S., UPOV-Train the Trainers Program, May 9-13, 2016, Kitisri Sukhapinda, Attorney Advisor, Office of Policy and International Affairs.
 MPEP § 1601.
 37 C.F.R. § 1.163.
 37 C.F.R. § 1.164.
 35 U.S.C. § 163.
 35 U.S.C. § 154.
This article appeared in the December 2018 issue of Global Patent Prosecution. To view our past issues, as well as other firm newsletters, please click here.