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Did You Know?

There were 356,943 unique utility patent applications processed in 2004.

There were a total 382,139 patent application in 2004.

Of those 382,139 patent application, 181,302 were granted.

Patent Law - Contact a Lawyer

Patent Law : What is it?

A patent is the grant of a property right to the inventor, issued by the Patent and Trademark Office. The term of a new patent is usually 20 years from the date on which the application for the patent was filed in the United States. The right of a patent is the right to exclude others from making, using, offering for sale, or selling the invention in the United States. Basically, a patent gives the owner the right to a monopoly on the use and sell of the invention for a period of time.

Types of Patents
There are three types of patents you can apply for: design patents, utility patents, and plant patents. Design patents last for 14 years, while plant and utility patents last for 20 years from the date of filing.

Design Patent
A design consists of the visual ornamental characteristics embodied in, or applied to, an article of manufacture. Since a design is manifested in appearance, the subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation. A design for surface ornamentation is inseparable from the article to which it is applied and cannot exist alone. It must be a definite pattern of surface ornamentation, applied to an article of manufacture.

In discharging its patent-related duties, the United States Patent and Trademark Office (USPTO or Office) examines applications and grants patents on inventions when applicants are entitled to them. The patent law provides for the granting of design patents to any person who has invented any new, original and ornamental design for an article of manufacture. A design patent protects only the appearance of the article and not structural or utilitarian features. The principal statutes (United States Code) governing design patents are:

35 U.S.C. 171

35 U.S.C. 172

35 U.S.C. 173

35 U.S.C. 102

35 U.S.C. 103

35 U.S.C. 112

35 U.S.C. 132

The rules (Code of Federal Regulations) pertaining to the drawing disclosure of a design patent application are:

37 CFR § 1.84

37 CFR § 1.152

37 CFR § 1.121

The practice and procedures relating to design applications are set forth in chapter 1500 of the Manual of Patent Examining Procedure (MPEP).

An ornamental design may be embodied in an entire article or only a portion of an article, or may be ornamentation applied to an article. If a design is directed to just surface ornamentation, it must be shown applied to an article in the drawings, and the article must be shown in broken lines, as it forms no part of the claimed design.

A design patent application may only have a single claim (37 CFR § 1.153). Designs that are independent and distinct must be filed in separate applications since they cannot be supported by a single claim. Designs are independent if there is no apparent relationship between two or more articles. For example, a pair of eyeglasses and a door handle are independent articles and must be claimed in separate applications. Designs are considered distinct if they have different shapes and appearances even though they are related articles. For example, two vases having different surface ornamentation creating distinct appearances must be claimed in separate applications. However, modified forms, or embodiments of a single design concept may be filed in one application. For example, vases with only minimal configuration differences may be considered a single design concept and both embodiments may be included in a single application.

Utility Patents
In general terms, a “utility patent” protects the way an article is used and works (35 U.S.C. 101), while a "design patent" protects the way an article looks (35 U.S.C. 171). Both design and utility patents may be obtained on an article if invention resides both in its utility and ornamental appearance. While utility and design patents afford legally separate protection, the utility and ornamentality of an article are not easily separable. Articles of manufacture may possess both functional and ornamental characteristics.

Plant Patents
A plant patent is granted by the Government to an inventor (or the inventor's heirs or assigns) who has invented or discovered and asexually reproduced a distinct and new variety of plant, other than a tuber propagated plant or a plant found in an uncultivated state. The grant, which lasts for 20 years from the date of filing the application, protects the inventor's right to exclude others from asexually reproducing, selling, or using the plant so reproduced. This protection is limited to a plant in its ordinary meaning:

A living plant organism which expresses a set of characteristics determined by its single, genetic makeup or genotype, which can be duplicated through asexual reproduction, but which can not otherwise be "made" or "manufactured."
Sports, mutants, hybrids, and transformed plants are comprehended; sports or mutants may be spontaneous or induced. Hybrids may be natural, from a planned breeding program, or somatic in source. While natural plant mutants might have naturally occurred, they must have been discovered in a cultivated area.
Algae and macro fungi are regarded as plants, but bacteria are not.

The information presented in this publication is tailored to apply to and is limited to patents on asexually reproduced plants. While the United States Patent and Trademark Office (USPTO) does accept utility applications having claims to plants, seed, genes, etc., such practice is beyond the scope of this publication. General information regarding utility practice can be obtained by calling PTO Information Services Division at 1-800-786-9199, or from a registered patent attorney. Intellectual property protection for true breeding seed reproduced plant varieties is offered through the Plant Variety Protection Office, Beltsville, Md., which should be contacted for information regarding intellectual property protection for such crops.

Provisions and Limitations

Patents to plants which are stable and reproduced by asexual reproduction, and not a potato or other edible tuber reproduced plant, are provided for by Title 35 United States Code, Section 161 which states:

Whoever 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, subject to the conditions and requirements of title. (Amended September 3, 1954, 68 Stat. 1190).

The provisions of this title relating to patents for inventions shall apply to patents for plants, except as otherwise provided.

As noted in the last paragraph of the statute, the plant patent must also satisfy the general requirements of patentability. The subject matter of the application would be a plant which developed or discovered by applicant, and which has been found stable by asexual reproduction. To be patentable, it would also be required:

That the plant was invented or discovered and, if discovered, that the discovery was made in a cultivated area.
That the plant is not a plant which is excluded by statute, where the part of the plant used for asexual reproduction is not a tuber food part, as with potato or Jerusalem artichoke.
That the person or persons filing the application are those who actually invented the claimed plant; i.e., discovered or developed and identified or isolated the plant, and asexually reproduced the plant.
That the plant has not been sold or released in the United States of America more than one year prior to the date of the application.
That the plant has not been enabled to the public, i.e., by description in a printed publication in this country more than one year before the application for patent with an offer to sale; or by release or sale of the plant more than one year prior to application for patent.
That the plant be shown to differ from known, related plants by at least one distinguishing characteristic, which is more than a difference caused by growing conditions or fertility levels, etc.
The invention would not have been obvious to one skilled in the art at the time of invention by applicant.

Where doubt exists as to the patentability of a specific plant, a qualified legal authority should be consulted prior to applying to assure that the plant satisfies statutory requirements and is not exempted from plant patent protection.

Inventorship

Because there are two steps which constitute invention in plant applications, there may be more than one inventor. An inventor is any person who contributed to either step of invention. For example, if one person discovers a new and distinct plant and asexually reproduces the plant, such person would be a sole inventor. If one person discovered or selected a new and distinct plant, and a second person asexually reproduced the plant and ascertained that the clone(s) of the plant were identical to the original plant in every distinguishing characteristic, the second person would properly be considered a co-inventor. If either step is performed by a staff, every member of the staff who performed or contributed to the performance of either step could properly be considered a co-inventor. Thus, a plant patent may have a plurality of inventors. However, an inventor can direct that the step of asexual reproduction be performed by a custom propagation service or tissue culture enterprise and those performing the service would not be considered co-inventors.

Asexual Reproduction

Asexual reproduction is the propagation of a plant to multiply the plant without the use of genetic seeds to assure an exact genetic copy of the plant being reproduced. Any known method of asexual reproduction which renders a true genetic copy of the plant may be employed. Acceptable modes of asexual reproduction would include but may not be limited to:

Rooting Cuttings	Grafting and Budding
Apomictic Seeds	Bulbs
Division	Slips
Layering	Rhizomes
Runners	Corms
Tissue Culture	Nucellar Embryos

The purpose of asexual reproduction is to establish the stability of the plant. This second step of the invention must be performed with sufficient time prior to application for patent rights to allow the thorough evaluation of propagules or clones of the claimed plant for stability thus assuring that such specimens retain the identical distinguishing characteristics of the original plant.

Rights Conveyed by a Plant Patent

Grant of a patent for a plant precludes others from asexually reproducing or selling or using the patented plant. A plant patent is regarded as limited to one plant, or genome. A sport or mutant of a patented plant would not be considered to be of the same genotype, would not be covered by the plant patent to the parent plant, and would, itself, be separately patentable, subject to meeting the requirements of patentability. A plant patent expires 20 years from the filing date of the patent application. As with utility applications, when the plant patent expires, the subject matter of the patent becomes public domain.

The Application

While the formal requirements of an application for plant patent will be outlined below, anyone seeking a patent should contact the USPTO just before filing of an application, to ensure that new requirements have not been made, and that the fees filed with the application are sufficient, as such are subject to change. Filing an application without sufficient fees may result in loss of filing date and/or having to pay an additional fee (a surcharge) to reactivate the application. Filing an application which is not complete may result in the application not being accepted by the PTO, and thus may result in the loss of intellectual property rights by the applicants. Applications which are not formal when filed may also result in loss of rights. Current filing, search, and examination fees for 35 U.S.C. 161 Plant Patent Applications may be found at: http://www.uspto.gov/web/offices/ac/qs/ope/fees.htm. (Fees are subject to change.)

Legal Representation

Those seeking a plant patent should be aware that they may prosecute their applications through the services of a registered patent attorney/agent. While the PTO will not help in the selection of an attorney/agent, one seeking a plant patent should select an attorney/agent who is registered to practice before the PTO.