Invention for purposes of a plant patent is a two step process:The first step is the discovery step which involves the identification of a novel plant. This step could be performed in any cultivated area. It could involve the identification or recognition of an offtype plant in a monoculture of a known variety or the identification of a desirable mutant which was either spontaneous or induced. Or, it could result from the identification or recognition of an outstanding individual within the progeny of a cross made in a planned breeding program.
The second step, which consists of asexual reproduction, tests the stability of the claimed plant to assure that the plant's unique characteristics are not due to disease, infection, or exposure to agents which cause a change in the plant's appearance which is transitory and not due to a change in the genotype of the plant.
Do The StepsIt is important that each of the above steps is satisfied before an application is filed. The inventor of a plant must have discovered or identified the novel plant, and must have asexually reproduced the plant and observed the clones so produced for a sufficient amount of time to have concluded that the clones are identical to the parent plant in all characteristics. It would be inappropriate to file an application before the second step of invention had been completed. Filing of an application before the second step of invention has been completed will result in rejection of the claim as being premature and nonstatutory.
Final Preparation and AssemblyBefore an application is filed, the (clones of the) plant must have been carefully observed during the testing process. Because the botanical description of the plant must be reasonably complete, it would not suffice to describe just the fruit, or flower, or bark, or leaves of any specific plant, even if these plant parts were the valuable substance of the plant in commerce or the only parts seem to be distinctive or different. It would be inappropriate to describe just the bark, roots and juvenile growth of a rootstock, even if only these parts would normally would be seen by or important to the consumer who was to purchase the plant.
In preparation of a plant patent disclosure, all parts of the plant should be carefully observed through at least one growth cycle and such observations should be recorded in detail.
Because many plants (like pine trees of the same species, asparagus plants, bluegrass plants, etc.) may look very similar, it may take the collective differences in a number of traits to distinguish a new cultivar. Failure to record characteristics and differences at their time of availability in the growing season could result in applicant not being able to adequately botanically describe the claimed plant when the specification is drafted. Incomplete records of a claimed plant may render it impossible to overcome defects identified in an examiner's rejection or at the very least prolong prosecution of the application.
Among the factors which must be ascertained for a reasonably complete botanical description for the claimed plant are: Genus and species - Habit of growth - Cultivar name - Vigor - Productivity Precocity (if applicable) - Botanical characteristics of plant structures (i.e. buds, bark, foliage, flowers, fruit, etc.) - Fertility (Fecundity)- Other characteristics which distinguish the plant such as resistance(s) to disease, drought, cold, dampness, etc., fragrance, coloration, regularity and time of bearing, quantity or quality of extracts, rooting ability, timing or duration of flowering season, etc.
The amount of detail required in a plant patent application is determined on a case-by-case basis, and is determined by the similarity of the prior art plants to the plant being claimed. The examiner will evaluate the completeness of the application. The examiner's judgment may be tempered by the level of activity in a specific market class. The botanical description of a plant in a market class with a high level of commercial activity may require greater detail, substance and specificity than that for a plant in a market class of little activity.